Background

Suzuki Motor Corporation has marketed a light off-road vehicle, the Jimny, for over 50 years, achieving cumulative worldwide sales of more than 3 million units. The current model has received Japan’s prestigious Good Design Gold Award and consistently ranks among the top-selling light passenger vehicles.

The Jimny is popular as a base vehicle for customization, with many enthusiasts spending substantial sums in modifications. In Japan, numerous specialty shops deal in customized Jimny vehicles and related parts. Active interaction among Jimny owners has fostered the development of a distinctive customization market. Notably, SSC Publishing Co., Ltd. publishes “Jimny Fan”, a popular magazine that has achieved strong sales within the niche market of publications focusing on modified off-road vehicles.

Procedural History before the Japan Patent Office

In 2023, SSC Publishing Co., Ltd. filed a trademark application for “Jiminy Fan” in Class 16 (see below). During examination, the JPO Examiner issued a decision of refusal, citing two registered trademarks owned by Suzuki, together with the following provisions of the Japan Trademark Act:

Article 4

(1) No trademark may be registered if the trademark:

(xi) is identical with, or similar to, another person’s registered trademark which has been filed prior to the filing date of an application for registration of that trademark, if such a trademark is used in connection with the designated goods or designated services relating to that registered trademark …, or goods or services similar thereto;

(xv) is likely to cause confusion in connection with the goods or services pertaining to a business of another person

SSC Publishing appealed, but the JPO Appeal Examiners upheld the refusal. The Examiners determined that “Jimny” is well known among automobile consumers in Japan, and therefore the dominant element of the SSC mark was “Jimny” and its katakana representation. Accordingly, they found the dominant element to be similar to the cited trademarks. As the designated goods and services were also deemed similar, they ruled that the SSC mark fell under Article 4(1)(xi) of the Trademark Act.

The Appeal Examiners further held that, even if the Applied-for Trademark were not found to fall under Article 4(1)(xi), use of the mark in connection with the designated goods, would likely lead traders and consumers to consider such goods as originating from Suzuki Motor, or from a party economically or organizationally related to Suzuki. This would give rise to a likelihood of confusion as to the source of the goods. Accordingly, they concluded that the mark would also fall under Article 4(1)(xv) of the Trademark Act.

SSC Mark (Applied-for Trademark)

Class 16

Information magazine on parts and accessories used for modification of off-road vehicles

 

Cited Trademark 1

Class 16 Printed matter, etc.

Right holder : Suzuki Motor Corporation

 

Cited Trademark 2

Class 9 Electronic publications, etc.

Class 35 Retail services or wholesale services for printed matter, etc.

Right holder : Suzuki Motor Corporation

Summary of the IP High Court’s Decision

SSC Publishing appealed to the IP High Court, which on August 5, 2024 handed down a decision ruling in favour of the Plaintiff. The court’s decision (2004(Gyo Ke) 10007), summarised below, comments separately on Trademark Act Article 4(1)(xi) and Article 4(1)(xv).

1. With respect to Applicability of Article 4(1)(xi)

In cases involving composite trademarks, where part of the mark gives a strongly dominant impression as a source identifier to traders and consumers, it may be appropriate to extract that part and compare it alone with another party’s trademark when assessing trademark similarity (Supreme Court, Judgment of September 1, 1993 and Judgment of September 8, 2008).

It is true that “Jimny” is widely known as the name of Suzuki’s off-road vehicle, and there is sufficient basis to conclude that, if used in connection with automobiles, it would give a strongly dominant impression as a source identifier.

However, there is no evidence that automobile manufacturers, including Suzuki, publish information magazines relating to off-road vehicle modification parts, nor can it be said that they are actively involved in this field. Accordingly, it is difficult to assume that traders or consumers encountering the designated goods would recognize Suzuki or related entities as the publisher of the magazine.

Although “Jimny” and its katakana representation “ジムニー” may attract attention as a base vehicle for customization, this is a matter distinct from source identification and does not provide a sufficient basis for extracting those elements as the dominant part of the composite trademark.

Therefore, “Jimny” and “ジムニー” should not be extracted as the dominant element, and the Applied-for Trademark should be compared with the Cited Trademarks in their entireties.

When compared as a whole, the Applied-for Trademark and Cited Trademarks Nos. 1 and 2 differ in appearance, pronunciation, and concept, and therefore are not similar. Accordingly, the Applied-for Trademark does not fall under Article 4(1)(xi) of the Trademark Act.

2. With respect to Applicability of Article 4(1)(xv)

The degree of recognition, fame, and originality of “Jimny” as the name of Suzuki’s off-road vehicle is high.

However, in determining whether there is a likelihood of confusion, it is also necessary to consider the relationship between the designated goods of the Applied-for Trademark and the goods or services pertaining to Suzuki’s business.

The designated goods of the Applied-for Trademark fall under Class 16 and consist of highly niche products, namely, “information magazines relating to parts and accessories used for the modification of off-road vehicles”. While automobile manufacturers may engage in the sale of related merchandise or ancillary services, there is no evidence that automobile manufacturers, including Suzuki, publish this type of information magazine. It is therefore difficult to assume that traders or consumers would recognize Suzuki or related entities as the publisher.

In addition, despite being aware that the plaintiff had been publishing a magazine under the same name for more than ten years, Suzuki did not issue any warnings or otherwise raise concerns regarding possible confusion, and instead supported the magazine through advertising placements. In light of these circumstances, it can be recognized that a clear market separation (“coexistence”) has been established, whereby the magazine is understood as a business conducted by a third party unrelated to Suzuki.

Accordingly, even if the Applied-for Trademark is used in connection with the designated goods, there is no likelihood of confusion with Suzuki’s Jimny trademark, and the Applied-for Trademark does not fall under Article 4(1)(xv) of the Trademark Act.

Comment

In its decision, the IP High Court clarified general principles applicable to automobile-related goods and ancillary services, while emphasizing that such general principles do not necessarily apply to highly niche products. The Court held that, in determining whether Article 4(1)(xi) and (xv) of the Trademark Act apply, it is necessary to carefully examine the actual conditions of trade. To this end, the court conducted evidentiary proceedings, including ex officio questioning of the plaintiff’s representative, and rendered its judgment after clarifying the actual market circumstances relating to the designated goods of the Applied-for Trademark.

This decision underscores the importance of examining the “actual conditions of trade” when assessing trademark similarity and the likelihood of confusion as to source.