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 said item lacks exclusive adaptability because it describes the characteristics of the designated goods or services and because others would want to use it as an appropriate indication necessary for transactions, therefore, it is a generally used indication, and in many cases, it lacks the discriminatory power of other goods or services. Consequently, in order to fall under said item, it would be sufficient for a trademark to be an appropriate representation in the course of trade as an indication of the characteristics of the designated goods or services, and it would be sufficient if the trademark is generally recognized as an indication of the quality of the goods or services, including in the future, when used for goods or services by traders or consumers. Whether or not it is generally recognized as above should be determined by taking into account the composition of the trademark and the circumstances of the transaction relating to the designated goods or services.
2. Regarding whether or not the trademark in question corresponds to Article 3, para.1, item 3 of the Trademark Act
The trademark in question in which the term “睡眠コンサルタント” is written horizontally (“the trademark of the present application”) makes it easy to recognize the meaning “an expert who provides consultation, advice, and guidance on matters of sleep” from its composition. In addition, there are several accredited bodies concerning “sleep consultants,” and there are several such bodies that teach expert knowledge on sleep etc., and there are several examples in which persons accredited by such bodies hold seminars on sleep etc. under the name of such qualifications. Further, there are many other examples in which a person who is recognized as a “sleep consultant” having specialized knowledge on sleep teaches knowledge on sleep and holds seminars. Moreover, there are actual circumstances in which books related to the above contents are produced in the industry of teaching knowledge or holding seminars.
Consequently, the trademark in question is a necessary and appropriate indication for the transactions as describing the quality of services such as “services related to sleep by a person with expert knowledge on sleep” in relation to the designated services “teaching of art, sports or knowledge, planning, operation or holding of seminars, provision of electronic publications, and production of books” in Class 41. Thus, the trademark in question is generally recognized that the quality of services is indicated when used for the designated services by traders and consumers. Therefore, the trademark in question 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.
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 goods or services, including in the future, when used for the designated goods or 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 goods or services.
2. Regarding the summary of the Judgment 2, the Intellectual Property Hight Court applied the summary of Judgment 1 to the present case, and the Court concluded without requiring the trademark in question generally used or widely recognized by traders and consumers that the trademark in question is an appropriate indication necessary for transactions as an indication of the quality of designated services such as “teaching of art, sports or knowledge, planning and operation of seminars, provision of electronic publications, and production of books,” in Class 41, and it is generally recognized as an indication of the quality of services when used for the designated services by traders and consumers, and therefore falls under Article 3, paragraph 1, item 3 of the Trademark Act.
【Keywords】Article 3, Paragraph 1, item 3 of the Trademark Act, Exclusive adaptability, Distinctiveness, Circumstances of Transaction, 睡眠コンサルタント (Sleep Consultant), 一般社団法人睡眠栄養指導士協会 (SLEEP NUTRITION ADVISER ASSOCIATION)
※ 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 (Please replace ☆ by @.)