[Article / Trademarks] Recent court cases on trademark similarity, focusing on Article 4(1)(xi) of the Trademark Act (Tomohiko Yamada, Patent, October 2025)
更新日：10月9日
Article information
Content type: Publication review
Categories: Trademarks
Issues: Trademark similarity / Composite marks / Trading circumstances
First published on this site: 2026-10-03
Display and classification checked: 2026-10-03
[Article / Trademarks] Recent court cases on trademark similarity, focusing on Article 4(1)(xi) of the Trademark Act (Tomohiko Yamada, Patent, October 2025)
1. The courts' latest approach
The “Tsutsumi no Ohinakkoya” decision (Supreme Court, September 8, 2008) was often interpreted as permitting separate observation only where a part “gives a strongly dominant impression,” etc.
Recent IP High Court decisions, such as Reiwa 2 (Gyo-Ke) 10104, “Homes-kun,” have established these approaches:
① “Separation is permitted unless inseparable”: Returning to the “Lyra” Supreme Court standard (December 5, 1963), separation is permissible unless the combination is so strong that separation would be unnatural in trade.
② An impression of a “considerable degree” is sufficient: Separate observation tends to be permitted at the level of “capable of functioning independently as a source identifier (a considerably strong impression),” not only at the high “strongly dominant” threshold.
2. Similarity in pronunciation: The importance of the “ear” in the Internet/AI era
Practice has shifted from emphasizing pronunciation—“similar pronunciation means similarity”—to comprehensive observation including appearance and meaning.
Comprehensive consideration: Cases finding dissimilarity despite identical pronunciation are increasing where appearance or meaning differs markedly, such as Reiwa 2 (Gyo-Ke) 10014, “Fufufu.”
Visual information: Appearance has greater weight in “look-and-buy” transactions such as online shopping.
Voice search as a countertrend: AI speakers and voice search may renew the importance of pronunciation. Identical pronunciation remains a strong rejection and infringement risk.
3. Goods/services similarity: Overcoming the “presumption” of similarity-group codes
JPO codes are influential but do not bind courts. Even if codes indicate dissimilarity, similarity may be found where the same business actually provides both, as in Reiwa 6 (Gyo-Ke) 10028, “AWG treatment.”
Congestion in 11C01 (programs): With every industry handling software, code 11C01, including Class 9 “computer programs,” is saturated and presents a major practical obstacle.
4. Actual trading circumstances: Selecting the “facts” considered
Arguments that “our company's particular sales method prevents confusion” (special, limited circumstances) are generally not accepted.
Original article: https://lnkd.in/gNM9iaA2
Original source shown in the LinkedIn preview: https://jpaa-patent.info/patent/viewPdf/4716
Originally posted on LinkedIn: https://www.linkedin.com/feed/update/urn:li:activity:7511584544471457792/
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Update and correction history
Dated entries are added for corrections, supplements, classification, display, and related-article changes, separately from the first publication date.
2026-10-03: First publication on this site from the LinkedIn original.
Consultation guide by purpose: https://www.takaishihideki.com/en/single-post/consultation-guide-en
