1. Consumer recognition of the MMPI indication
It is acknowledged that consumers of the “psychological testing”, which is the designated service of the Trademark, include psychologists and researchers such as physicians, licensed psychologists, clinical psychologists, and public officers who engage in conducting psychological testing at health and medical institutions, welfare organizations, and educational institutions.
It is also acknowledged that the “MMPI” indication was widely recognized among the aforementioned consumers as that referring to the “Minnesota Multiphasic Personality Inventory” (Psychological Testing), which is the questionnaire-based psychological testing developed by Hathaway and Mckinley for understanding character tendencies, or to the abbreviation of the testing.
2. Applicability of Article 2, Paragraph 1, Item 3 of the Trademark Act
Article 26, Paragraph 1, Item 3 of the Trademark Act provides that the effect of a trademark right does not extended to a trademark indicating, in a common manner, the “quality” etc. of a service. It is interpreted that the purport of this provision is to guarantee free use of indications such as “quality” etc. of a service in a manner that is normally used in transactions, given the fact that transactions cannot be conducted smoothly unless such indications are presented to the consumer, in order to adjust the demand for smooth transactions with the interests of holders of trademark right.
The MMPI indication was widely recognized among the relevant consumers as stated above, and a hyphen and number are generally used in combination to indicate a version of something. Given these circumstances, it is acknowledged that consumers coming in contact with the defendant’s marks which consist of the combination of the “MMPI-1” part with the part “性格検査” [meaning “character testing” in Japanese], “回答用紙” [meaning “response sheet” in Japanese], or “自動診断システム” [meaning “automatic diagnosis system” in Japanese], would recognize the letter part of “MMPI” in the defendant’s marks as indicating the Psychological Testing, so that it is acknowledged that the letter part of “MMPI” indicates the content of psychological testing. Since the “quality” of a service according to Article 26, Paragraph 1, Item 3 of the Trademark Act includes the “content” of the service, it is acknowledged that the letter part of “MMPI” in the defendant’s marks shows the “quality” of the “psychological testing” which is the designated service of the Trademark.
Next, according to the manner in which the defendant’s marks are shown on the defendant’s products, it cannot be said, in all cases, that the letter part of “MMPI” in the defendant’s marks is especially unique in terms of the letter size, font, and the position of the indication, and that it is shown in a manner that is normally used in transactions. Accordingly, it is acknowledged that the quality of the “psychological testing”, which is the designated service of the Trademark, is indicated “in a common manner”.
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From what is described above, it is acknowledged that the defendant’s marks that contain the letter part of “MMPI” correspond to a trademark indicating, “in a common manner”, the “quality” etc. of the “psychological testing”, which is the designated service of the Trademark. Accordingly, Article 26, Paragraph 1, Item 3 of the Trademark Act is applicable, and the effect of the right for the Trademark does not extend to the defendant’s marks.
1. Regarding the summary of Judgment 1, the Court identified, as a premise for judging the applicability of Article 26, Paragraph 1, Item 3 of the Trademark Act to the defendant’s marks that contain the letter part of “MMPI” of the Trademark, relevant consumers of the “psychological testing”, which is the designated service of the Trademark, and then determined how the relevant consumers recognize the “MMPI” indication.
2. Regarding the summary of Judgment 2, the Court affirmed, based on the summary of Judgment 1, that the letter part of “MMPI” of the defendant’s marks correspond to a trademark indicating, “in a common manner”, the “quality” etc. of a “service”, and then affirmed the applicability of Article 26, Paragraph 1, Item 3 of the Trademark Act to the defendant’s marks that contain the letter part of “MMPI”.
【Keywords】Article 26, Paragraph 1, Item 3 of the Trademark Act, limitations of effects of trademark rights, an indication of the content of a service, an indication of the quality of a service, an indication of the quality of goods similar to a service, in a common manner, use as a trademark
※ 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