August 20, 2024
＜Trademark＞
(kiseki-no rakanka)
＜Designated Goods＞
Class: 30 Confectionery flavored with siraitia (other than fruit-based, vegetable-based, bean-based or nut-based), Coffee flavored with siraitia,
Intellectual Property High Court Judgement April 24, 2024
Case number : 2023 (Gyo-Ke) 10109
Presiding judge: Masatoshi MIYASAKA
◆ Full text of the Judgement
https://www.courts.go.jp/app/files/hanrei_jp/984/092984_hanrei.pdf
【Summary of the Judgement】
1. The procedural defect in the trial of this case
Article 15-2 stipulates that the examiner shall notify the applicant for trademark registration of reasons for refusal where he/she intends to render a decision to the effect that an application is to be refused and article 55-2(1) is applied mutatis mutandis to cases where reasons for refusal that are different from those contained in the examiner’s decision are found in the appeal against examiner’s decision of refusal.
The JPO issued a notice of grounds for refusal and a decision of refusal (the “Initial Decision of Refusal”) concerning the Trademark, wherein it is stated that Article 3, paragraph (1), item (iii) of the Trademark Act is applied for the ground for refusal, the JPO rendered a trial decision that the trademark falls under item (vi) of the same paragraph (the “JPO Decision”) but no separate notice of grounds for refusal was issued prior to the JPO decision.
“Grounds for refusal” as in a notice of grounds for refusal should be understood as the indication of a specific ground for refusal of registration as provided in the Trademark Act (referenced provision) and the explanation that the trademark falls under that provision.
If a different referenced provision is to be applied, that fact itself constitutes a “different ground for refusal” as a general rule.
The statutory purpose of each item of the Article 3, paragraph (1) of the Trademark Act is that each item specifies the separate grounds for refusal and there is no conceptual hierarchical or inclusive relationship between item (vi) and items (i)～(v) of the same paragraph as it is clearly stated in the item (vi) of the same paragraph that “If a trademark does not fall under any of the items (i) to (v) of this Paragraph but lacks distinctiveness, it is judged to be applicable to this item”.
The principle of a country ruled by law is that public authority by government ministries and agencies (in this case, the refusal of an application for trademark registration) shall be exercised based on the specific provisions of the law and the referenced provision for the refusal shall be the primary principle regarding the difference in grounds for refusal. Therefore, it is not reasonable to say that different ground for refusal do not constitute “different grounds for refusal” simply because there is a commonality in the legislative intent behind the different grounds for refusal.
While taking the above-mentioned principle into consideration, there may be room for interpretation that the grounds for refusal in the initial decision of refusal and those in the JPO decision do not constitute “different grounds for refusal” in case a special circumstance is found to exist, even if the grounds for refusal in the initial decision of refusal and the grounds for refusal in the JPO decision rely on different referenced provisions because these decisions are identical in substance.
It is held in the trial decision that “奇跡の（kiseki-no）” in the Trademark is understood by traders and consumers as “常識では考えられないような(joushiki dewa kangaerarenai youna)” when they come across the Trademark, therefore, the Trademark falls under item Article 3, paragraph (1), item (vi) of the Trademark Act on the different premise from the initial decision.
Because the premises of the definition of “奇跡の (kiseki-no)” in the initial decision and in the JPO decision differ, different opinion the plaintiff needed to argue differently in the written opinion in response to the notice of grounds for refusal and in the appeal examination. Thereby, comparing these different grounds, it is not reasonable to conclude that the findings and grounds of the Initial decision of Refusal and the JPO decision are identical in substance and it is considered that the JPO should have provided the plaintiff with the opportunity for explanation again and no special circumstance was found to exist.
2. Whether or not a defect should affect the conclusion of the JPO Decision
It is understood that even if a defect (a violation of the law) exists in trial proceedings, it cannot be a ground for rescission of the trial decision unless it is determined to affect the
conclusion of the trial decision.
In the trial proceedings, a written inquiry notifying the ground for the trial decision was served upon the plaintiff in advance, therefore the plaintiff was at least given the opportunity for explanation.
The ground for refusal indicated in the written inquiry and the JPO Decision was based on
the argument of the plaintiff in its written opinion (The purport is that the Trademark associates “an improbably mysterious fruit Siraitia grosvenorii” in a common manner) submitted in response to the notice of grounds for refusal. The JPO accepted the plaintiff’s argument concerning the meaning of the Trademark in its entirety, but relied on this argument against the plaintiff to conclude that the Trademark as interpreted in that way falls under Article 3, paragraph (1), item (vi) of the Trademark Act. Based on the allegations made by plaintiff in the argument regarding the consumers’ understanding and recognizing the meaning of the Trademark, it is reasonable that the Trademark falls under Article 3, paragraph (1), item (vi) of the Trademark Act. Even if the plaintiff had been given an opportunity for explanation, they could not have rebutted effectively unless they had reversed their arguments. Even if they had reversed their allegation in the arguments with knowing their contradictions, the court would have held that their arguments had been contrary to the principle of estoppel or an ad hoc response without rational reasons.
Based on the totality of the abovementioned circumstances, it is reasonable to understand that procedural defect does not affect the conclusion of the JPO Decision although the JPO Decision has a defect as mentioned above in its proceedings.
3. Applicability of Article 3, paragraph (1), item (vi) of the Trademark Act to the Trademark
The plaintiff argues in the written opinion that the Trademark in its entirety associates “an improbably mysterious fruit Siraitia grosvenorii” .
The evidences (No.6-35) with which the plaintiff provided in the proceedings suggest that the word “奇跡 (kiseki)” is widely and generally used and adopted to advertise products and raw materials with the meaning “常識では考えられないような (joshiki dewa kangaerarenai youna)” such as “improbably mysterious fruits”, “improbably mysterious vegetables”, “improbably mysterious grapes” and “improbably mysterious strawberries” in the food and beverage industries, .
Traders and consumers who come across the Trademark would recognize it as “an improbably mysterious fruit Siraitia Grosvenorii‘ and they would not recognize it as indicating that the relevant goods pertain to a business of a particular person when the Trademark is used for its designated goods.
Therefore, the Trademark falls under Article 3, paragraph (1), item (vi) of the Trademark Act because traders and consumers cannot recognize it as indicating that the relevant goods pertain to a business of a particular person.
【Comments】
1. Summary of the judgement 1. holds that the trial proceedings of the JPO decision with
these procedure contained a defect and it also holds that there is no conceptual
hierarchical or inclusive relationship between item (vi) of the Article 3, paragraph (1) and
items (i)～(v) of the same paragraph.
2. Summary of the judgement ２. holds that procedural defect does not affect the conclusion
of the JPO Decision although the JPO Decision had a defect in its proceedings.
3. Summary of the judgement 3. holds that the Trademark falls under Article 3, paragraph (1),
item (vi) of the Trademark Act.
In the “UV mini” case (Case Number: 2005(Gyo-Ke) No.10651), it was held that “The
trademarks which do not enable consumers to recognize that the goods or services are
connected with a certain person’s business’ as specified in Article 3, paragraph(1), item(vi)
of the Trademark Act” may be understood to include trademarks that do not serve a
function to distinguish the products of the trademark owner from those of other parties (for
example, those that do not have the semblance of a trademark, and trademarks that are
assumed to be dysfunctional as trademarks because their features per se prevent
themselves from serving a function to distinguish the products of the trademark owner from
those of other parties in a manner other than specified in item 1 through item 5. They also
include trademarks that are dysfunctional as trademarks because in the actual state of
transaction, they do not serve a function to distinguish the products of the trademark owner
from those of other parties, even if those trademarks are not assumed to be dysfunctional
as trademarks because their features per se prevent themselves from serving such a
function”
【Abstract of the judgement】
1. The procedural defect in the trial proceeding
Article 15, paragraph (2) of the Trademark Act stipulates that the examiner shall notify the applicant for trademark registration of the reasons for refusal where the examiner intends to render a decision to the effect that an application is to be refused and Article 55, paragraph 2, item (i) shall be applied mutatis mutandis when a reason different from the reason stated in the decision of refusal is find. The JPO issued a notice of ground for refusal and a decision of refusal (the “Initial Decision of Refusal”) concerning the Trademark, where in it was stated that Article 3, paragraph (1), item (iii) of the Trademark Act was applied for the ground for refusal, however, the JPO rendered a trial decision that the Trademark falls under item (vi) of the same paragraph and no separate notice of grounds for refusal was served prior to the JPO Decision. (No further correspondence was addressed.). The Trademark Act recites the conditions in which the examiner intends to render a decision to the effect that an application is to be refused in the each item of the Article 15 and stipulates that the examiner shall render a decision to the effect that the trademark is to be registered where no reasons for refusal are found in connection with an application for trademark registration within the time limit provided by Cabinet Order. (Article 16) .
From these principles of the Trademark Act, “ground for refusal” to be included in a notice of grounds for refusal of registration as provided in the Trademark Act (referenced provision) and the explanation that the trademark falls under that provision. If a different referenced provision is to be applied, that fact itself constitutes a “different ground for refusal” as a general rule. The statutory purpose of each item of the Article 3, paragraph (1) of the Trademark Act is that each item specifies the separate grounds for refusal and there is no conceptual hierarchical or inclusive relationship between item (vi) and items (i)～(v) of the same paragraph as it is clearly stated in the item (vi) of the same paragraph. (For reference, Article 30, paragraph 40 and Article 47, paragraph 4, item (i) of the Copyright Act are ) are exemplified, however, the Article 3, paragraph (1) of the Trademark Act is different from these examples. The principle of a country ruled by law is that public authority by government ministries and agencies (in this case, the refusal of an application for trademark registration) shall be exercised based on the specific provisions of the law and the referenced provision for the refusal shall be the primary principle regarding the difference in grounds for refusal. Therefore, it is not reasonable to say that different reasons for refusal do not constitute “different reasons for refusal” simply because there is a commonality in the legislative intent behind the different grounds for refusal.
It is reasonably assumed from the plaintiff’s standpoint that the plaintiff should have argued to contest the grounds for the initial decision of refusal focusing on that the word “奇跡 (kiseki)” is not understood as “rich in nutrition”, therefore, the mark is not considered to be indicating “Quality” as stipulated in Article 3, paragraph (1), item (iii) of the Trademark Act.
The plaintiff asserted in their request for a trial to the effect that the trademark does not indicate the quality of the goods, however, they did not assert on the premise of the possibility that the possibility that Article 3, paragraph (1), item(vi) is applied for the ground for the refusal.
Whereas, it is held in the trial decision that “奇跡の (kiseki-no)” in the Trademark is understood by traders and consumers as “常識では考えられないような (joshiki dewa kangaerarenai youna)”, therefore, the Trademark falls under item Article 3, paragraph (1), item (vi) of the Trademark Act on the different premise from the initial decision. Because the definition of “奇跡の” adapted in the initial decision and in the JPO decision differed, the plaintiff needed to argue differently in the written argument opinion in response to the notice of grounds for refusal and in the appeal examination. Thereby, comparing these different grounds, it is not reasonable to conclude that the findings and grounds of the Initial decision of Refusal and the JPO decision are identical in substance and it is considered that the JPO should have provided the plaintiff with the opportunity for explanation again and no special circumstance is found to exist.
2. Whether or not a defect should affect the conclusion of the JPO Decision
It is understood that even if a defect (a violation of the law) exists in trial proceedings, it cannot be a ground for rescission of the trial decision unless it is determined to affect the conclusion of the trial decision. (This principle is applied not only to the case of the procedural violation of the law but also case of the substantial violation of the law.)
Considering the above fact, in the trial proceedings, a written inquiry notifying the ground for the trial decision was served upon the plaintiff in advance, which means that the plaintiff was at least given the opportunity for explanation.
Of course, JPO’s serving a document “inquiry” upon the plaintiff is not considered to be equivalent to serving a notice of grounds for refusal which is a statutory procedure, therefore, it is not said that the plaintiff was given a “proper” opportunity for explanation.
The ground for refusal indicated in the written inquiry and the JPO Decision was based on
the argument of the plaintiff in its written opinion (The purport is that the Trademark associates “an improbably mysterious fruit Siraitia grosvenorii” in a common manner) submitted in response to the notice of grounds for refusal. The JPO accepted the plaintiff’s argument concerning the meaning of the Trademark in its entirety, but relied on this argument against the plaintiff to conclude that the Trademark as interpreted in that way falls under Article 3, paragraph (1), item (vi) of the Trademark Act. The court found that the Trademark falls under Article 3, paragraph (1), item (vi) of the Trademark Act hereinafter based on the allegations made by plaintiff in the argument regarding the consumers’ recognizing the meaning of the Trademark as mentioned below in 4. Even if the plaintiff had been given an opportunity for explanation, they could not have rebutted effectively unless they had reversed their arguments. Even if they had reversed their allegation in the arguments with knowing their contradictions, the court would have held that their arguments had been contrary to the principle of estoppel or an ad hoc response without rational reasons.
In light of the above circumstances in this case, it is reasonable to conclude that although the trial procedure in this case has the defect mentioned above, but it does not affect the conclusion of the trial decision.
3. Applicability of Article 3, paragraph (1), item (vi) of the Trademark Act to the Trademark
The trademark, “奇跡のラカンカ,” written in horizontal direction,
the elements of the trademark “奇跡“and “ラカンカ” , when recognized according to commonly understandable meaning (evidence No. 3-5), “ラカンカ” is a description of 羅漢果, a cucurbitaceous plant native to China, in Japanese Katakana characters and the Trademark in its entity shall be interpreted as “an improbably mysterious fruit Siraitia grosvenorii (常識では考えられない神秘的な羅漢果)”. The above is what the plaintiff argues in the written opinion.
The evidences (evidence No.6-35) with which the plaintiff provided in the proceedings suggest that the wording “奇跡(improbably mysterious)” is widely and generally used and adopted to advertise products and raw materials with the meaning “常識では考えられないような“ such as “improbably mysterious fruits”, “improbably mysterious vegetables”, “improbably mysterious grapes” and “improbably mysterious strawberries” in the food and beverage industries.
Traders and consumers who come across the Trademark would recognize it as “an improbably mysterious fruit Siraitia Grosvenorii’ and they would not recognize it as indicating that the relevant goods pertain to a business of a particular person when the Trademark is used for its designated goods. Therefore, the Trademark falls under Article 3, paragraph (1), item (vi) of the Trademark Act because traders and consumers cannot recognize it as indicating that the relevant goods pertain to a business of a particular person.
【Keywords】Procedural defect, Article 3, paragraph (1), item (iii) of the Trademark Act,
Article 3, paragraph (1), item (vi) of the Trademark Act, Article 55, paragraph (1) of the Trademark Act, Article 15, paragraph (2) of the Trademark Act, distinctiveness of the trademark, ‘an improbably mysterious fruit Siraitia grosvenorii’
The content of this article is intended to provide general information, and not to constitute any legal advice.
Author: Patent & Trademark Attorney Takashi ISHIDO
Supervisor: Attorney at law, Patent & Trademark Attorney Kei IIDA (The Daini Tokyo Bar Association)
For inquiries regarding this article, please contact via Email : tm@nakapat.gr.jp