April 10, 2023
Intellectual Property High Court Decision of June 16, 2022 (Case No. 2022 [Gyo-ke] 10002―Presiding Judge Tamotsu SHOJI)
◆Main text of the case
【Summary of the Judgment】
１．Regarding the purport and evaluation criteria of Article 3, para.1, item 3 of the Trademark Act
The purport of Article 3, para.1, item 3 of the Trademark Act is that the trademark prescribed in the said item, in relation to the designated services, merely indicates descriptively the location, quality, articles to be used for the services, efficacy, use and other characteristics of the services, and any person desires to use it as a necessary and appropriate indication in the course of transactions. Therefore, it is not appropriate in the public interest to allow the exclusive use of the mark by a specific person, and in many cases, the mark lacks the power to distinguish between the services of oneself and others. In order for a trademark to fall under the said item, it is sufficient if, at the time when the trial decision was rendered, the trademark was, in relation to the services, a necessary and appropriate indication in the course of trade as an indication and description of the quality of the services, and if it is used for the said services by the traders and consumers, it will be generally recognized as an indication of the quality of the services, including those in the future. Whether or not the trademark is generally recognized as such should be determined by taking into consideration the composition of the trademark and the circumstances of the transactions related to the designated services.
２．Regarding whether or not the subject trademark falls under Article 3, para.1, item 3 of the Trademark Act
The trademark consisting of the words “おんじゃくきゅう” and “温石灸” in two columns (“the subject trademark”) is recognized as the Hiragana part in the upper column representing the reading of the Kanji part in the lower column. The word “温石” means “a baked pumice stone wrapped in a cloth to warm the body”, and the word “灸” generally means “one of Chinese herbal therapies”. The kanji part of the subject trademark is recognized as a combination of the words “温石” and “灸”.
At the time when the trial decision was rendered, a treatment (treatment using heated stones) in which heated stones were placed at specific positions on the body to obtain the effect of heat stimulation was widely practiced in the industry. The treatment using warm stones was not necessarily strictly distinguished from moxibustion, but was widely practiced under the name of “温石灸” as a treatment that could obtain effects similar to those of moxibustion by using warmed stones instead of lit moxa as a tool to warm the affected part of the body. Furthermore, in the subject industry, there were various moxibustion names which contain names of materials and tools used for moxibustion to express the method and contents of the treatment.
In view of the above, the word “温石灸” is easily understood by traders and consumers to mean “moxibustion (treatment) using warm stones” as a term indicating “a treatment similar to moxibustion in which a warm stone is placed on an affected part instead of a lit moxa”. The word “温石灸” is a necessary and appropriate indication of the quality of the services in relation to the designated services of the subject trademark, and should be generally recognized as indicating the quality of the services when it is used for the said services by the traders and consumers. Therefore, the word “温石灸” merely indicates the quality of services in a common manner.
Therefore, the subject trademark falls under Article 3, para.1, item 3 of the Trademark Act as a trademark consisting solely of a mark indicating the quality of services in a manner that is normally used for the designated services.
３．Regarding whether or not the subject trademark falls under Article 4, para.1, item 16 of the Trademark Act
When the subject trademark is used for the designated services, it should be generally recognized by traders and consumers as indicating the quality (content) of the services of “moxibustion (treatment) using heat stones”. Then, if the subject trademark is used for services other than “moxibustion (treatment) using heat stones”, it may be liable to be misleading cause misidentification of the quality of services .
According to the above, the subject trademark falls under Article 4, para.1, item 16 of the Trademark Act because it is likely to misleading as to the quality of the services.
【Comments】
１．Regarding the summary of the Judgment 1, with respect to purport and criteria of Article 3, para.1, item 3 of the Trademark Act, the Intellectual Property High Court determined the same as in previous court cases: (Supreme Court, April 10, 1979, Minshu No.126, No.507 [Waikiki Case] and numerous lower court cases based thereon; Intellectual Property High Court, May 14, 2014 (Case No. 2013 Gyo-ke 10341) [Otaku Konkatsu Case], Intellectual Property High Court, October 6, 2014 (Case No. 2014 Gyo-ke 10056) [Network Omakase Suport Case], Intellectual Property High Court, September 16, 2015 (Case No. 2015 Gyo-ke 10061) [Noukansi Case], and Intellectual Property High Court, September 16, 2015 (Case No. 2015 Gyo-ke 10062)[Yukanshi Case], Intellectual Property High Court, November 30, 2015 (Case No. 2015 Gyo-ke 10152) [Niku sommelier Case], etc.). In line with the above, the Intellectual Property High Court found in particular that whether or not the trademark pertaining to this judgment is generally recognized as indicating the quality of services, including in the future, when used for the designated services by traders or consumers, should be determined by taking into consideration the composition of the trademark and the circumstances of the transaction concerning the designated services.
２．Based on the holding in 1 above, this decision recognizes and judges the circumstances of the transaction in this case. Although the method of heating the affected area with heat differs between hot stones and moxibustion in terms of whether heated stones or lit moxa is used, they are similar in that they are treatments in which an object emitting heat is placed at a specific position on the body and the effect of the heat stimulation is obtained, and treatment using hot stones is not necessarily strictly distinguished from moxibustion. The treatment using warm stones is not necessarily strictly distinguished from moxibustion. In addition, in the subject industry, there are various types of moxibustion with names of materials and tools used for moxibustion, which represent the method and the contents of the treatment, and there is also the fact that a treatment that can obtain effects similar to moxibustion is widely performed under the name of 温石灸”. Therefore, the word “温石灸” has the same meaning as “moxibustion (treatment) using a warm stone” as a word that represents “the same kind of treatment as moxibustion, in which a warm stone is placed on the affected part instead of moxa that has been set on fire”.
３．Based on the above, this judgment applies the aforementioned purpose and criteria of Article 3, para.1, item 3 of the Trademark Act to the present case, and finds that subject trademark is an indication necessary and appropriate for transactions as an indication of the quality of services in relation to the designated services ” Massage and therapeutic Shiatsu massage; moxibustion; acupuncture, etc.” in Class 44, and is generally recognized by traders and consumers as indicating the quality of the services when used in connection with the designated services. When the trademark is used for the designated services, it is generally recognized by traders and consumers as indicating the quality of the services, and therefore, it falls under Article 3, para.1, item 3 of the Trademark Act. The court also concluded that the subject trademark falls under Article 4, para.1, item 16 of the Trademark Act because it may be liable to be misleading cause misidentification of the quality of services when it is used for designated services other than “moxibustion (treatment) using heat stones”.
【Keywords】Article 3, Paragraph 1, item 3 of the Trademark Act，Article 4, Paragraph 1, item 16 of the Trademark Act，温石灸，Distinctiveness，Misidentification of quality of services，Circumstances of Transaction
※The contents of this article are intended to convey general information only and not to provide any legal advice.
Takeo SUMIYA (Writer)
Patent Attorney（Japan Patent Attorneys Association）
Kei IIDA (Supervisor)
Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)
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