The Intellectual Property High Court (IPHC) judged on July 19, 2023 that a trademark registration of “GUZZILLA” (Japanese Trademark Registration No. 6143667, as shown below) owned by a Japanese construction machinery component manufacturer, Taguchi Industrial Co. Ltd. (Appellant), could cause confusion with “GODZILLA”, the English name of a renowned Japanese monster movie distributed by Toho Co. Ltd. The IPHC rendered a decision to dismiss the request made by Taguchi for litigation to rescind a Japanese Patent Office (JPO) trial decision where the GUZZILLA trademark was invalid.
Case History
Taguchi had sold their wrecking cutters by the name of GUZZILLA series before filing a trademark application for “GUZZILLA” in 2011 (Japanese Trademark Application No. 2011-083464) and then the mark was registered the following year, 2012 (Japanese Trademark Registration No. 5490432). Toho, a film distributor, filed an invalidation trial at the JPO against Taguchi’s trademark registration, “GUZZILLA” referring to the English name of their monster film, “GODZILLA” (hereafter cited trademark) in 2017. In the invalidation trial, while the JPO admitted the visibility of the cited trademark, the JPO judged that “GUZZILLA” was not considered to cause confusion. Therefore, Toho’s request was dismissed. Later, Toho appealed to the IPHC, requesting the revocation of the JPO trial decision for dismissal. The IPHC found that the trademark “GUZZILLA” could cause confusion over the source and handed down a judgement that rescinds the JPO trial decision for dismissal. After the IPHC judgement, the JPO finalized and concluded the trial decision for invalidation of “GUZZILLA” in 2019.
On the other hand, before the above JPO invalidation trial decision was finalized, Taguchi again filed another application for the same trademark in 2018 (Application No. 2018-095354) and it was registered in 2019 (Registration No. 6143667). In opposition to this registration, Toho filed an invalidation trial, citing their own trademark GODZILLA again. In the trial decision, the JPO admitted that “GUZZILLA” could cause confusion over the source and issued the decision of invalidation trial in 2022. This JPO decision triggered Taguchi to file a lawsuit at the IPHC. Taguchi appealed against the JPO trial decision of invalidation to the IPHC and requested the revocation of the decision. In July 2023, the IPHC concluded that “GUZZILLA” (Registration No. 6143667) was likely to cause confusion over the source with GODZILLA which is a well-known/established trademark and dismissed Taguchi’s request for the revocation of the trial decision.
Allegation of Taguchi
In the current case, Taguchi alleged that their registered trademark “GUZZILLA” was unlikely to make confusion with the monster movie, “GODZIILA.” The designated goods of the registered trademark, “GUZZILLA” (Registration No. 6143667) are Class 7: attachment for power shovel crushers, cutting machines, gripping machines and drilling machines, and traders and consumers of these goods are specialized companies engaged in civil engineering work. On the other hand, the monster “GODZILLA” is the character targeted at general consumers. The consumers of each trademark are widely different, and the determination of the possibility of confusion should be considered in relation to those professionals who are involved in the field of civil engineering.
IPHC Decision
On July 19, 2023, the IPHC rendered the decision that “GUZZILLA” (Registration No. 6143667) is likely to cause confusion in relation to the cited trademark “GODZILLA” and the trademark in question, “GUZZILLA” must be invalidated. As grounds for the judgement, the IPHC pointed out that the degree of similarity between both trademarks is high in terms of the pronunciation and the appearance of the trademarks. At the same time, the cited trademark is a well-known famous trademark and highly creative. The Court also stated that some of the designated goods of the trademark in question have certain relevance to the goods and business where Toho grants licenses in terms of properties and intended uses under Toho’s business diversification. With the aforementioned grounds, the Court found the possibility of misunderstanding that the designated goods are offered by parties who have close business partnerships with Toho such as an affiliate company, or those who belong to a group which operates commercialization of identical marks.
JPO Trademark Examination Guidelines (Article 4, Paragraph (1) and Article 15 of Japanese Trademark Act)
According to the JPO Trademark Examination Guidelines, “a trademark which is likely to cause confusion between products or services related to another person’s business,” is defined as “not only the case of leading to a possible misunderstanding that the goods or services belong to the other person’s business (hereafter “goods, etc.”), and where the consumers of the product could likely be confused about the source of the goods, etc., but also the case where consumers may likely misunderstand that the product relates to a business which belongs to someone who has some economical or organizational relationship with the other person”. The Guidelines list the following criteria for judging the confusion mentioned above:
- Degree of similarity between the filed trademark and the other persons’ mark
- Recognition of the other persons’ mark
- Whether the other person’s mark consists of a coined word or the mark has a distinctive feature in composition.
- Whether the other person’s mark is their company’s mark
- Possibility of business diversification of the other person
- Relativeness among goods or services or between goods and services
- Commonality of consumers of goods, etc. and other conditions such as actual situation of deal