Date: 6 May, 2021

【Volume 44】

Trademark designs often consist of similar design elements like square and round frames, and badges to elevate the fame of trademarks and to impress the consumer. However, when determining whether a likelihood of confusion exists, it depends on if consumers can identify the source of goods and services through the distinguishing parts of trademarks, instead of similar designing elements adopted in the trademarks. In such circumstance, the classification of “design element” and “distinguishing part” in a trademark would be an important legal issue. Reiwa 1st year (2021) Gyo-Ke No. 10170 Judgement¹ made by the Japan Intellectual Property High Court aims to clarify the determination of graphical and word elements of the trademark.

Case Fact

Bull Pulu Corporation (“Bull Pulu”) is a beverage chain in Japan who registered the trademark “Bull Pulu TAPIOCA” (“the Contested Trademark”) at the Japan Patent Office (“JPO”) on March 9th, 2016, and the application was approved on December 9th, 2016.

Starbucks Corporation (“Starbucks”) then filed an opposition against the Contested Trademark. Starbucks claimed that the Contested Trademark is similar to the trademark it possessed (“the Earlier Trademark”) and requested JPO to revoke the registration of the Contested Trademark. JPO found both trademarks are not similar and dismissed the opposition.

Starbucks then filed the suit for cancelling the JPO decision before the Japan Intellectual Property High Court. The court found that the two trademarks are not similar and maintained the decision made by JPO.

Contested Trademark and Earlier Trademark

	Contested Trademark	Earlier Trademark
Trademark
Registration Date	December 9th, 2016	October 1st, 2004
Trademark Holder	Kabushiki Kaisha Bull Pulu (“株式会社 Bull Pulu”, Bull Pulu Corporation)	Starbucks Corporation (“スターバックス・コーポレイション”)
Description of Goods and Services	Class 29 Dairy products with tapioca flour. Class 30 Coffee with tapioca flour; cocoa with tapioca flour; desserts with tapioca flour; tapioca flour; edible tapioca starch. Class 43 Restaurant services, etc.	Class 18 Purses; umbrellas; fur, etc. Class 25 Jackets; hats; shoes, etc. Class 30 Coffee; other candies and bread, etc. Class 43 Restaurant services, etc.

Starbuck’s Argument

Starbucks claimed that the Cited Trademark and its green outer ring had already been famous before the application date of the Contested Trademark. According to the result of a consumer survey provided by Starbucks, more than 80% of the respondents associated the green outer ring and white words ( “” ) with Starbucks. Such fact proves that the green outer ring is one of the distinguishing parts of the Earlier Trademark. Hence, the Contested Trademark with an identical green outer ring is similar to the Earlier Trademark, and it is likely to cause the confusion of relevant consumers.

Summary of the Japan Intellectual Property High Court Judgement

However, the court did not agree with Starbuck’s argument. The court’s reasoning is summarized below:

1. Although the picture of the green outer ring  presented in the consumer survey was blurred, the survey was suspected of intentionally misdirecting the respondents. As such, Starbuck’s survey evidence could not establish the fame of the green outer ring.
2. The court reasoned that the green outer ring is merely a conceptual design element, and the words and graphics on the Contested Trademark’s ring were not “STARBUCKS / COFFEE” and stars respectively. The consumers cannot separate the Earlier Trademark’s design concept and identify the green ring solely. Therefore, the green outer ring is not a specific component of the Earlier Trademark.
3. In conclusion, the main distinguishing part of the Contested Trademark is “BULLPULU”, and that of the Earlier Trademark is “STARBUCKS”. The court opined that there is no likelihood of confusion as the two trademarks under comparison are visually, aurally and conceptually highly dissimilar.