[Trademark] 2023 (Gyo-Ke) 10067 <Honda> — Comparing the “O!O!” Portion of the Registered Mark with the Cited Mark
更新日：03false11 GMT+0000 (Coordinated Universal Time)
Article information
Article type: Case note
Category: Trademarks
Topics: Distinctiveness, Similarity of trademarks, Confusion
First published on this website: 2026-11-01
Display and classification checked: November 2, 2026
Originally published on Ameblo: 2024-08-15 (Japan time). Full English translation.
[Trademark] 2023 (Gyo-Ke) 10067 <Honda>Separating and assessing the essential part of a composite mark
⇒ The “O!O!” part of the registered mark was compared with the cited mark and found similar (Trademark Act Article 4(1)(xi)). (Decision maintaining registration set aside)
Registered mark “5252byO!O!” (individual)
Cited mark “OIOI” (Marui)
(Excerpts from the court's reasoning)
As stated in Part 2, 1(1) above, the mark at issue consists of the numerals, Roman letters, and exclamation mark “5252byO!Oi” written horizontally in one continuous line in black Gothic type, in the same size and at equal intervals. However, “by” is widely used and familiar in Japan as an English preposition indicating, through the usage “by XXX,” that “the source of the goods or services is XXX.” Considering also that “by” is lowercase, the mark as a whole can be said to be configured so that the “O!Oi” following “by” independently attracts the viewer's attention. Moreover, whereas “5252” merely lists numerals and has no particular distinctiveness, “O!Oi,” though using Roman letters, is not a word recorded in dictionaries. Although it may give rise to pronunciations “oh-oi” or “oh-oh-eye,” its pronunciation is not uniformly determined because it uses an exclamation mark. The alternation of circles and vertical lines gives it a visually striking impression, making it a distinctive element that can be understood as either a coined word or a design. In addition, given that, as stated above, “by XXX” is widely used and familiar as indicating that “the source of the goods or services is XXX,” the “O!Oi” placed after “by” must be said to give a strong and dominant impression as a source identifier within the mark's composition. Thus, although it is only part of the mark, “O!Oi” is found to perform the source-identifying function of the mark as a whole. It must therefore be permissible to extract this portion as the essential part of the mark and compare only this portion (hereinafter the “essential part at issue”) with another person's mark to assess similarity.
The essential part at issue gives rise to no particular concept, whereas Cited Mark 3 gives rise to the concept of “Marui's logo”; their concepts can therefore hardly be called identical.
Next, the essential part at issue may give rise to “oh-oi” or “oh-oh-eye,” while Cited Mark 3 may give rise to “oh-eye-oh-eye,” “oi-oi,” and “Marui.” Although the pronunciations differ strictly because the essential part includes “!”, they share many sounds and must be considered reasonably similar.
Regarding appearance, both the essential part at issue and Cited Mark 3 comprise four letters or symbols in Gothic type, and both have “O” as the first and third characters. Different letters or symbols appear as the second character (“!” versus “I”) and fourth character (“i” versus “I”), but their shapes are similar in that each consists of either a single vertical line or a single vertical line and a dot on its extension. In addition, the arrangement, including the spacing between characters, is close. Thus, although there are differences on close examination, the two appearances must be said to be confusable when observed separately at different times and places.
In addition to the foregoing, the designated goods of both the mark at issue and the cited marks are fashion/apparel-related goods or items worn by ordinary consumers, and their traders and consumers therefore include the general public. The essential part at issue gives rise to no particular concept. The possible pronunciations of the essential part and Cited Mark 3 are not identical but are reasonably similar, and neither can readily be said to have a single definite pronunciation; pronunciation is therefore unlikely to be decisive as a source identifier for traders and consumers. Ordinary consumers are considered to pay attention primarily to the appearance of the goods or logos in identifying the source of apparel, fashion goods, and wearable items. Considering these matters together, the mark at issue has an essential part whose pronunciation is reasonably similar to Cited Mark 3 and whose appearance is confusable with it. Even allowing for the fact that the overall composition is not identical to Cited Mark 3, if both marks are used for the designated goods of the mark at issue, the possibility that traders and consumers will mistake their sources cannot be excluded, and a likelihood of misidentification and confusion as to the source of the goods is found.
Accordingly, when the impressions, memories, and associations given to traders and consumers are considered together and the marks are examined as a whole in light of the actual trading circumstances of the goods, the mark at issue is found similar to Cited Mark 3.
https://www.nakapat.gr.jp/ja/legal_updates_jp/【商標法★】結合商標の分離・要部観察により下/
Translator’s notes (editorial)
The source summary writes O!O! whereas the quoted judgment writes O!Oi. Both forms are retained.
Update history
The first-published date remains unchanged. Display maintenance, classification changes, related-article updates, and text corrections are recorded separately.
November 1, 2026: First published on this website.
November 2, 2026: Added article information, classification, topics, language navigation, related articles where the same case was confirmed, consultation guidance, and SEO. The original text and first-published date were preserved.
