【Trademark Act ★】A case in which the Court revoked a decision of the Japan Patent Office which refused an application for registration of the trademark “空調服”, consisting of common Japanese characters, which designates Class 25, “working clothes, shirts and blouson having ventilation function” as its designated goods, by finding that the trademark in question corresponds to a “mark consisting solely of a mark indicating, in a common manner, the quality…of goods” set forth in Article 3, Paragraph 1, Item 3 of the Trademark Act; however, the trademark in question corresponds to a “trademark by which, as a result of the use thereof, consumers are able to recognize the goods…as those pertaining to a business of a particular person” set forth in Article 3, Paragraph 2 of the same Act.

June 23,2021

The Intellectual Property High Court Decision of February 25, 2021 (Case No. 2020 [Gyo-Ke] 10084―Presiding Judge MORI)

【Summary of the Judgment】

Regarding whether or not the trademark in question falls under Article 3, Paragraph 1, Item 3 of the Trademark Act

At the time of the trial decision (rendered on April 30, 2020), the trademark in question (the “Applied Trademark”) could be recognized as indicating “clothing which is capable of controlling the temperature of the air etc. by having ventilation function” when it is used for the designated goods; therefore, the Applied Trademark corresponds to a mark indicating the quality of goods. Further, the Applied Trademark consists solely of the term “空調服” (meaning “air-conditioned clothing” in English) in common Japanese characters, and thus the Applied Trademark corresponds to a trademark consisting solely of a mark indicating, in a common manner, the quality of goods. Accordingly, the Applied Trademark falls under Article 3, Paragraph 1, Item 3 of the Trademark Act.

Regarding whether or not the Applied Trademark falls under Article 3, Paragraph 2 of the Trademark Act

In light of the fact that a product called “空調服”, or the name of “空調服” had a high appealing power in 2005 when the full-scale sale thereof was started, and for ten (10) years thereafter, the market for such a product category (clothe equipped with an electric fan [the “EF Clothe”]) had been dominated by the Plaintiff and their licensees, and especially, “空調服” was featured as a term indicating the Plaintiffs’ product many times in media including national newspapers, magazines, and TV programs including national broadcast programs, and “空調服” was introduced into construction companies, it is acknowledged that “空調服” became widely known and recognized among consumers and traders in the field of the EF Clothe as a term indicating the Plaintiffs’ product by around 2015.
Further, after other companies entered the market of the EF Clothes around in 2015,

(i) especially, “空調服”, or the EF Clothe, has been featured as a term indicating the Plaintiffs’ product, or as a product originated from the Plaintiff’s product “空調服”, many times in print media including national newspapers, magazines, and TV programs including national broadcast programs, “空調服” has been advertised by the Plaintiffs in various forms, and the number of companies which have introduced “空調服” has been increasing;

(ii) in addition to the term “空調服”, other general terms are used for the EF Clothe:

(iii) other manufacturers of the EF Clothe have been performing sales activities therefor under product names or brand names different from “空調服”; and

(iv) “空調服” sold by the Plaintiffs and their licensees still controlled about one-third (1/3) of the market of the EF Clothe in 2018 and 2019 even though many other companies had entered the EF Clothe market.

Considering the above-mentioned circumstances, it is acknowledged that the degree of recognition of “空調服” has been growing without loosing the function to indicate the source of the Plaintiffs’ product.

Therefore, at the time of the trial decision (rendered on April 30, 2020), as a result of the use of the Applied Trademark, consumers of the designated goods were able to recognize the goods as those pertaining to the business of the Plaintiffs. Therefore, the Applied Trademark falls under Article 3, Paragraph 2 of the Trademark Act.

【Comments】

Regarding the summary of Judgment 1, the Court found, based on the respective meanings and combined form of the terms “空調” and “服” comprising the Applied Trademark “空調服”, that the Applied Trademark indicates the quality of the designated goods “working clothes, shirts and blouson having ventilation function” that are “capable of controlling the temperature of the air etc.” and denied inherent distinctiveness of the Applied Trademark.

Regarding the summary of Judgment 2, the Court affirmed that the Applied Trademark had acquired distinctiveness through the use thereof until the end of its market dominance, especially, based on substantial evidence additionally presented during the litigation rescinding the trial decision, also on the grounds of the descriptive use mode and the fact of use of the Applied Trademark to licensed products at the time of their market dominance, and without requiring specific and objective sales figures and advertising and promotional costs and evidence therefor. The Court then further affirmed that distinctiveness of the Applied Trademark acquired through the use thereof was maintained at the time of the trial decision, based on the facts that other general terms have been used after the end of the market dominance by the Applied Trademark, competing manufacturers do not use the Applied Trademark, and the Applied Trademark holds adequate market share.

【Keywords】Article 3, Paragraph 1, Item 3 of the Trademark Act, indication of the quality of goods, in a common manner, inherent distinctiveness, Article 3, Paragraph 2 of the Trademark Act, distinctiveness acquired through use

※ The contents of this article are intended to convey general information only and not to provide any legal advice.

Kei IIDA (Writer)

Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)

Contact information for inquiries: k_iida@nakapat.gr.jp

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