【Trademark Act ★】A Case in which the Intellectual Property High Court partially rescinded a decision made by the Japanese Patent Office (the “JPO Decision”), which partially maintained a request for a trial for trademark invalidation, on the ground that the registered trademark which consists of words “Scrum Master” written horizontally in standard characters is a necessary and appropriate indication for the transaction as describing the quality of the designated services such as “teaching of art, sports or knowledge, education and training, planning, operation or conducting of qualifying examination, planning, operation or holding of seminars” in Class 41 and is generally recognized as indicating the quality of services when used for such designated services by traders and consumers and therefore falls under Article 3, para.1, item 3 of the Trademark Act.

July 4,2022

Intellectual Property High Court Decision of May 19, 2022 (Case No. 2021 [Gyo-ke] 10100―Presiding Judge Ichiro OTAKA)

【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 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, and thus the trademark does not necessarily need to be actually used for the goods or services.

2.　Regarding whether or not the trademark in question corresponds to Article 3, para.1, item 3 of the Trademark Act

At the time of the Examiner’s decision on the trademark registration, it is recognized that the terms “Scrum” and “Scrum Master” are recognized in the computer- and IT-related fields as representing one of the methods of developing agile software and roles in such “Scrum”. In addition, judging from the general meaning of “master”, it is recognized that the term “Scrum Master” will give rise to the concept of a person who has acquired “Scrum” which is a method of developing agile software. Consequently, the trademark in question can be understood by the traders and consumers to indicate an acquiring of “Scrum” which is one of the methods for developing agile software, and educational training etc. related to particular roles in the “Scrum” when used for educational training, training sessions, and seminars, and therefore the trademark in question is generally recognized as indicating the quality (content) of such services. The trademark in question consists solely of standard characters and the word “Scrum Master” in a common manner, and therefore, it can be regarded as falling under Article 3, para.1, item 3 of the Trademark Act.

On the other hand, the JPO Decision ruled that “Scrum Master” does not fall under Article 3, para.1, item 3 of the Trademark Act on the grounds that it is not generally used as a direct representation of the quality of goods and the quality of services, and that there are no special circumstances where traders or consumers should be deemed to recognize “Scrum Master” as the quality of goods and the quality of services. However, the JPO Decision contains errors in its premise.

【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 Support 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.), and Intellectual Property High Court, January 25, 2022 (Case No. 2021 Gyo-ke 10113). In line with the above, in particular, related to the JPO Decision in which the JPO determined that the trademark in question does not fall under Article 3, para.1, item 3 of the Trademark Act, the Intellectual Property High Court held that the trademark in question does not necessarily need to be actually used for the said 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 concluded that the trademark in question falls under Article 3, paragraph 1, item 3 of the Trademark Act. On the other hand, the Intellectual Property High Court found that the JPO Decision which determined that the trademark in question does not fall under the said item on the ground of whether it is generally used as a direct indication of the quality of goods and the quality of services etc., contains errors in its premise in light of the summary of Judgment 1.

3. In recent years, as shown in the table below, in addition to this case, a number of trademark registrations or trademark applications owned or applied by the defendant Ark Corporation in relation to the similar marks or the similar designated goods or services have been refused, invalidated, or rescinded on the grounds of Article 3, para.1, item 3 of the Trademark Act etc.

Mark

Examiner’s Decision,
Trial Decision or
Cancellation Decision

Reason for refusal, invalidation, or cancellation

AgileScrum

(Standard characters)

Examiner’s Decision of Refusal

August 15, 2019