Trademark Date
Right
Case number

December 26, 2023
2023 (Gyo-Ke) 10079

Court

Intellectual Property
High Court, Second
Division- A case in which it was determined that a trademark with the designated goods of"Gummi Candy" and configured by indicating the characters of " 地 球 グ ミ(CHIKYU-GUMI)" in standard characters falls under the trademark listed in Article 4,paragraph (1), item (x) of the Trademark Act.
Case type: Rescission of Trial Decision to Maintain
Result: Granted
References: Article 4, paragraph (1), item (x), paragraph (3) of the Trademark Act
Related rights, etc.: Trademark Registration No. 6525426
Decision of JPO: Invalidation Trial No. 2022-890049
Summary of the Judgment
1 The Defendant is a trademark right holder of a trademark (hereinafter, referred
to as the "Present Trademark") with the designated goods of class 30 "Gummi Candy"
and indicating the characters of the " 地 球 グ ミ (CHIKYU-GUMI)" in standard
characters.

The Plaintiff asserts that the Present Trademark falls under the

trademark listed in Article 4, paragraph (1), item (x) or item (xix) of the same
paragraph in the Trademark Act and requested a trial for invalidation of trademark
registration regarding the trademark registration of the Present Trademark.

The

trademark, asserted by the Plaintiff, which falls under the well-known trademark
under item (x) of the same paragraph or the well-known trademark under item (xix) of
the same paragraph is a trademark (hereinafter, referred to as the "Cited Mark") andthe like configured by writing characters of the "地球グミ (CHIKYU-GUMI)",
which is considered to be used for the goods that the Plaintiff imports / sells(hereinafter, referred to as the "Plaintiff's Goods").

The Patent Office did not

acknowledge the well-known characteristics of the Cited Mark, proscribed all theaforementioned assertions by the Plaintiff, and made the JPO Decision dismissing therequest for a trial.

This case is a case in which the Plaintiff made a request for

rescission of the JPO Decision.
2 This Judgment approved the well-known characteristics of the Cited Mark anddetermined that the Present Trademark is similar to the Cited Mark and that thedesignated goods related to the Present Trademark are identical to the Goods related
to the Cited Mark and thus, the Present Trademark falls under the trademark listed in
Article 4, paragraph (1), item (x) of the Trademark Act, and rescinded the JPO
Decision.

iWell-known characteristics of the Cited Mark
According to the facts found by the evidence, related to the well -known
characteristics of the Cited Mark, the following circumstances should be
acknowledged.
That is, the Plaintiff's Goods are sweets manufactured by a foreign company andnamed as "Trolli Planet Gummi", "Planet Gummi", and the like, and the Plaintiff's
Goods or the package or individual package thereof do not have characters as "地球グミ (CHIKYU-GUMI)" described in Japanese.

However, the Plaintiff's Goods were

extremely popular in Korea mainly, among video contributors and their viewers
around 2018, and the popularity spilled over to Japan.

And the Plaintiff 's Goods

made a big boom mainly among the video contributors and their viewers also in Japan
from around 2020, and by October in the same year at the latest, when the Plaintiff
started import / sales of the Plaintiff's Goods, some retailers having shops all overJapan called the Plaintiff's Goods " 地 球 グ ミ (CHIKYU-GUMI)" and began
advertisement thereof.

After the Plaintiff started import / sales of the Plaintiff's

Goods, too, the Plaintiff's Goods became very popular, and such a state continued that
the Goods were sold out at the retailers' shops immediately after the sales started, andit became extremely difficult to obtain the Goods.

Since the Plaintiff started theimport / sales of the Plaintiff's Goods, the retailers having shops all over Japan havecalled the Plaintiff's Goods "地球グミ (CHIKYU-GUMI)" and repeatedly advertisedthem.

Moreover, the Plaintiff's Goods enjoyed high popularity as the Goods called "地球グミ (CHIKYU-GUMI)" at video contributing websites.

The Plaintiff's Goods

as above were at last reported in national papers and sub-key TV stations in Osaka asvery popular goods called "地球グミ (CHIKYU-GUMI)" in June of 2021, and in the
TV reporting, the Goods were ranked in the ranking, chosen by the Generation Z, offoods and drinks which became popular in the first half of the year.

The Plaintiff's

Goods were in the end reported by the key TV stations in Tokyo as similarly popular
goods in July and were introduced as goods that young people in their early 20's all
knew (it is to be noted that the Plaintiff called the Plaintiff's Goods "地球グミ(CHIKYU-GUMI)" in a TV program in June of the same year at the latest and began
advertisement of the Plaintiff's Goods called " 地 球 グ ミ (CHIKYU-GUMI)" in
September of the same year at the latest).

Moreover, the Plaintiff's Goods called "地

球グミ (CHIKYU-GUMI)" were introduced in line with a novel by a famous author,a musical piece by a famous singer and song-writer, and the like as examples of works
or goods which became famous as the contribution to the video contribution websites
as a trigger in November of the same year.
ii

Also, the Goods won the second rank inthe "Cafe / Gourmet Section" in the award called "SHIBUYA109 lab. Trend Award2021", which was the result of research (of 545 women of 15 to 24 years old) by anoperating company of a famous commercial facility in Shibuya-Ku.

On the basis of

the trend of the Plaintiff's Goods called "地球グミ (CHIKYU-GUMI)" as above until
2021, "Modern Language Basic Knowledge 2022" issued in January in 2022 pickedup the term " 地 球 グ ミ (CHIKYU-GUMI)", which is a colloquial term of thePlaintiff's Goods, as goods which attracted attention in 2021 (big-hit food goods).
In light of the aforementioned circumstances, it is reasonable to admit that theterm "地球グミ (CHIKYU-GUMI)" (Cited Mark) falls under the trademark which
had been widely recognized among consumers (in light of the fact found by thecontents and the nature, as well as evidence of the goods for which the Cited Markwas used, it is found to be consumers of gummi candies including young people) as
the object indicating the Goods (Plaintiff's Goods) related to the business of thePlaintiff or the manufacturer of the Plaintiff's Goods by the date of decision of thiscase (February 22, 2022) at the latest.

iii

Judgment rendered on December 26, 2023
2023 (Gyo-Ke) 10079 Case of Seeking Rescission of the JPO decision
Date of conclusion of oral argument: October 26, 2023
Judgment
Plaintiff:

YUTAKA TRADING COMPANY LIMITED

Defendant:

SSB Co., Ltd.

Main Text
1. The JPO Decision made by the Japan Patent Office on June 20, 2023 on theInvalidation Trial No. 2022-890049 shall be rescinded.
2. The Defendant shall bear the court costs.
Fact and Reason
No. 1 Claims
The same as 1, Main Text.
No. 2 Background
This case is a lawsuit of seeking rescission of the JPO decision dismissing therequest for a trial for invalidation of a trademark registration.

Issues are: [i] whether

or not the registered trademark (hereinafter, referred to as the "Present Trademark") i n
Postscript 1 falls under the trademark listed in Article 4, paragraph (1), item (x) of theTrademark Act; and [ii] whether or not the Present Trademark falls under the
trademark listed in the item (xix) of the same paragraph.
1. Registered Trademark
The Defendant is a trademark right holder of the following registeredtrademark (Present Trademark) (Exhibit Ko 1, entire import of oral argument,
hereinafter, the trademark registration related to the Present Trademark shall bereferred to as the "Present Trademark Registration").
(1) Registration number: Trademark Registration No. 6525426(2) Date of filing: December 16, 2021 (hereinafter, referred to as the "Date of1

Filing")(3) Date of decision of registration: February 22, 2022 (hereinafter, referred toas the "Date of Decision")(4) Date of registration: March 9, 2022
(5) Configuration of the trademark: "地球グミ(CHIKYU-GUMI)" (standard
characters)(6) Class of goods and services as well as designated goods: Class 30 "Gummi
Candy"
2. Outline or procedures and the like at the JPO
The Plaintiff made a request for a trial for invalidation of the Present
Trademark Registration on June 23, 2022, and the JPO examined this as Invalidation
Trial No. 2022-890049 (no dispute).
The JPO made the decision that "the request for the Trial is dismissed." on June20, 2023 (hereinafter, referred to as the "JPO Decision"), and the certified copy
thereof was serviced to the Plaintiff on the 29th day of the same month (no dispute).
The Plaintiff instituted this lawsuit for rescission of the JPO Decision (Obvious
fact to this court) on July 25, 2023.
3. Summary of Reasons for the JPO Decision
The reasons for the JPO Decision are as in the JPO Decision in the Attachment.
The summary thereof is as follows.
(1) Cited mark and the goods using that (related to the assertion by the
Plaintiff)
A. Cited Mark 1(a) Configuration of the mark: Mark configured by writing the characters of "地球グミ(CHIKYU-GUMI)"(b) Goods used therefor: Gummi candy
B. Cited Mark 2(a) Configuration of the mark: Mark configured by writing the characters of "プラネットグミ(PURANETTO-GUMI)"(b) Goods used therefor: Gummi candy(2) Assertion by the Plaintiff (related to Cited Mark 1)
It is difficult to acknowledge that the gummi candy sold by the Plaintiff (thosewith the goods name "Trolli Planet Gummi" and the like, hereinafter, referred to as
the "Plaintiff's Goods") had been well-known in Japan or in foreign countries before
the Date of Filing, and Cited Mark 1, which is a common name of the Plaintiff's
Goods, cannot be acknowledged to have been widely recognized among the general2

consumers in Japan or in foreign countries as the mark indicating the goods(Plaintiff's Goods) related to the business of the Plaintiff on the Date of Decision
since before the Date of Filing.

Then, Cited Mark 1 cannot be acknowledged, either,to have been widely recognized among the consumers in Japan (under Article 4,paragraph (1), item (x) of the Trademark Act) or in Japan or in foreign countries(under item (xix) of the same paragraph) as the mark indicating the goods related tothe business of the Plaintiff on the Date of Filing and the Date of Decision.
Therefore, even if the Present Trademark and Cited Mark 1 are identical or similar
and the designated goods of the Present Trademark and the goods used therefor of
Cited Mark 1 are identical or similar, the Present Trademark does not fall under the
trademark listed in Article 4, paragraph (1), item (x) of the Trademark Act.
Moreover, even without determining on the purpose of unfair acts, it does not fallunder the trademark listed in the item (xix) in the same paragraph.
(3) Assertion by the Plaintiff (related to Cited Mark 2)
Since it is not acknowledged that the Plaintiff's Goods with the characters of"Planet Gummi" had been well-known in Japan or in foreign countries, even if Cited
Mark 2 is assumed to be a cited mark, the Present Trademark does not fall under the
trademark listed in Article 4, paragraph (1), item (x) or item (xix) of the same
paragraph of the Trademark Act.
(4) Conclusion
As described above, the Present Trademark Registration cannot be considered
to be made in violation of the provisions in Article 4, paragraph (1), item (x) or item(xix) of the same paragraph of the Trademark Act and thus, the Present Trademark
Registration should not be invalidated on the grounds of the provisions in Article 46,
paragraph (1), item (i) of the same Act.
(omitted)
No. 5 Judgment of this court
1. Found Facts
According to the listed evidence and the entire import of oral argument, thefollowing facts are found.
(1) The Plaintiff's Goods are Gummi candy manufactured in Spain by anaffiliated company of a German manufacturer (Exhibit Ko 6).

The Plaintiff's Goods

are sweets in which a strawberry filling with an image of magma is filled in blue
gummi candy in a spherical shape resembling the earth, and the package thereof (bag 3

shaped one accommodating some pieces of the Plaintiff's Goods, herein after, whenthe "package of the Plaintiff's Goods" or the like is referred to, it refers to this bag shaped one) has characters of "Trolli" described on an upper state on a front surface
and characters of "Planet Gummi" or characters of "Blue Planet" described in thevicinity of a middle stage on the front surface, respectively.

And the individual

package (spherical shaped one, hereinafter, when the "individual package of thePlaintiff's Goods" or the like is referred to, it refers to this spherical -shaped one) of
the Plaintiff's Goods has the characters of "Trolli" described, but the Plaintiff's Goods,
the package, and the individual package thereof do not have such description of thecharacters of "地球グミ(CHIKYU-GUMI)" (Exhibits Ko 2, 27-1).
(2) The Plaintiff first imported the Plaintiff's Goods in October in 2020 andstarted to sell them in Japan (Exhibit Ko 6).

The document titled "Trolli Guide to

New Product" prepared by the Plaintiff (Exhibit Ko 2) carries photos of the Plaintiff's
Goods, the package, and the individual package thereof and description that thePlaintiff's Goods were scheduled to be sold around autumn in that year, but there wasno description of "地球グミ(CHIKYU-GUMI)".

Moreover, the document had thedescription that "Sure to look good on Instagram!

Much-talked-about プラネット

グミ(PURANETTO-GUMI) on YouTube and SNS!!".
(3) Loft used a hashtag "#地球グミ(CHIKYU-GUMI)" and the like in theofficial account on Twitter at that time (hereinafter, referred to simply as "Twitter")on September 29, 2020 prior to the start of sales of the Plaintiff's Goods by the
Plaintiff and posted "Hot topic #地球グミ(CHIKYU-GUMI) landed on Loft!! ... thename is トローリ(TORORI)#プラネットグミ(PURANETTO-GUMI)!", "On sale at
118 Loft shops all over the country and Loft Net Store, excluding some shops!
Limited quantity!" and the like, together with the images of the package of thePlaintiff's Goods and the individual package accommodating the Plaintiff's Goods(Exhibit Ko 31).
(4) PLAZA, on October 2, 2020, used the hashtag "# 地球グミ(CHIKYUGUMI)" and the like in its official account on Twitter and posted "Hot topic in
YouTube, ' プ ラ ネ ッ ト グ ミ (PURANETTO-GUMI)' of 'Trolli (# ト ロ ー リ(TORORI))" as #地球グミ(CHIKYU-GUMI) hits the scene" together with the imagesof the Plaintiff's Goods, the package, and the individual package thereof (Exhibit Ko30-2).
(5) THANKYOUMART, on March 31, 2021 (hereinafter, for dates in 2021,
description of the year might be omitted in some cases), used the hashtag "# 地球グミ
(CHIKYU-GUMI)" and the like in its official account on Twitter and posted "Thank4you for waiting ... hot topic in YouTube, '# 地球グミ(CHIKYU-GUMI)' will befinally on sale at THANKYOUMART", "地球グミ(CHIKYU-GUMI) will be on saleat THANKYOUMART all over the country from Friday, April 2 as soon as they
arrive" and the like together with the images of the Plaintiff's Goods, the package, theindividual package thereof, and the like (Exhibit Ko 39-1).
(6) THANKYOUMART posted in its official account on Twitter on April 3
that "the hot topic, '地球グミ(CHIKYU-GUMI)' will be sequentially on sale fromtoday at shops all over the country... very, very, very popular goods, get them as soon
as possible ... !" together with images of the Plaintiff's Goods, the package, theindividual package thereof, and the like (Exhibit Ko 29).
(7) On June 24, on the news site of Mainichi Shimbun, a web article (ExhibitKo 6) titled "Reason why adults do not know that mysterious sweets '地球グミ(CHIKYU-GUMI)' are out of stock everywhere..." was published.

The main body of

the article had a photo of the package of the Plaintiff's Goods (with the note that " 'ト
ローリプラネットグミ(TORORI-PURANETTO-GUMI)' with the nickname of '地
球グミ(CHIKYU-GUMI)' made a secret boom provided by YOTAKA TRADINGCOMPANY") and the like and described [i] the sweets called "地球グミ(CHIKYUGUMI)" became popular in SNS mainly among children and young people and aresold out everywhere; [ii] "地球グミ(CHIKYU-GUMI)" are out of stock at shops andofficial online shops, are sold at premium prices at Amazon, and are auctioned at
Mercari at high prices; [iii] 地球グミ(CHIKYU-GUMI) is mainly sold at shops ofbusiness operators handling import foods such as PLAZA, Don Quijote, Village
Vanguard, Kaldi, Loft, and the like, but according to PLAZA, after they started
transactions thereof in autumn of 2020, such a state has continued that immediately
after shipment of the goods, they were sold out, the next shipment would be in autumn
in 2021 and after, and the state continues at shops of the other operators; and [iv] thetrigger of the popularity of the Plaintiff's Goods was posting of a video recording astate in which the video contributor in Korea was eating " 地球グミ(CHIKYUGUMI)", to a video contribution site around 2018, and it was spread by many video
contributors, spilled over to Japan after that, and those who posted the videos of " 地
球グミ(CHIKYU-GUMI)" in the video contribution sites have rapidly increased since
2020.

The article was also introduced in the account of Mainichi Shimbun on

Twitter (Exhibit Ko 9) on the day when the article was published with a photo of the
packaged Plaintiff's Goods.
(8) In the program by Kansai TV, aired from 4:45 pm on June 25, "NEWS
Runner", the Plaintiff's Goods were introduced as "Ranking of popular foods / drinks
5chosen by the Generation Z in the first half of 2021" (Exhibits Ko 12, Ko 13).

In theprogram, the Plaintiff's Goods were called "地球グミ(CHIKYU-GUMI)" and such
explanation was made that the goods were difficult to get, and even the Plaintiff, whois the importer, did not have any inventory at all.

Moreover, in the program, it was

explained that "地球グミ(CHIKYU-GUMI)" became popular when a popular video
contributor posted a video recording a state where the contributor bit and opened theindividual package of the Plaintiff's Goods, and many people followed the video
contributor, which made it difficult to get the goods, as the history of the popularity.
(9) In the Mainichi Shimbun issue of July, 3, an article titled "' 地球グミ
(CHIKYU-GUMI)' that adults do not know" (Exhibit Ko 7) was published.

Themain text of the article had substantially the same contents as the article in the
aforementioned (7) with a photo of the package of the Plaintiff's Goods.
(10) During the program "HIRUNANDESU" by Nippon Television aired from11:55 in the morning on July 5, an entertainer A introduced the Plaintiff's Goods as "地球グミ(CHIKYU-GUMI)" in a corner reporting "goods that young people in theirearly 20's all know" (Exhibits Ko 15, Ko 16).

Moreover, in a web article (Exhibit

Ko 16) as of the same date of Tokyo Chunichi Sports of Chunichi Sports reporting the
program, it was described that the Plaintiff's Goods were called "地球グミ(CHIKYUGUMI)" with the shape imitating the blue globe and attracted popularity of SNS
influencers.

On the same day, in the account of "B" on Twitter, a post (Exhibit Ko17) describing "Found the 地球グミ(CHIKYU-GUMI) aired in HIRUNANDESU at
Rakuten EC site!

So curious" was posted with the hashtag of "#地球グミ(CHIKYU-GUMI)" and an image of the package of the Plaintiff's Goods (noted as "a set of threepieces of 地球グミ(CHIKYU-GUMI)").
(11) During the program "Viking MORE" by FUJI TELEVISION from 11:55
in the morning on August 12, a state in which an SNS contributor called "C"
introduced the Plaintiff's Goods called "地球グミ(CHIKYU-GUMI)" and the like wasaired.

In an upper right part in the image of the scene in the aired program in which

the person named "C" introduces the Plaintiff's Goods, subtitles that "ThoroughSearch on the Reason of Hits, Ranking GO of Curious Things, Popular among
Generation Z ... Top 5 of Foods / Drinks" were placed, and in the scene introducing
the photo of the Plaintiff's Goods accommodated in the individual package, a subtitle
which reads "Big hit in Korea before Japan" was given, and in the scene in which theperson called "C" made explanation, the subtitle that "Pay attention to the 'taste' of 地球グミ(CHIKYU-GUMI)" was given (Exhibits Ko 19, 21-1 to 5).

The person called"C" posted, with the still image of the program including the image of the Plaintiff's
6

Goods accommodated in the individual package, that "I talked about 地球グ ミ(CHIKYU-GUMI) which became a hit in the first half of 2021 in Viking MORE by
FUJI-affiliated TV.

The popularity of the 地球グミ(CHIKYU-GUMI) is fabulous!"in the account of the same person on Twitter on the same day (Exhibit Ko 21 -1).
(12) Village Vanguard posted on Twitter on August 22 in their official accountthat, with the hashtag of "#地球グミ(CHIKYU-GUMI)", "Does Village Vanguard
have '地球グミ(CHIKYU-GUMI) ...' which is said to be inquired about 500 times a
day in the city?
next?

Do they?

Did they?

What is the price?

When will they arrive

We will answer all the questions from the customers here!!" with an image ofthe package of the Plaintiff's Goods (Exhibit Ko 27-1).
(13) The Plaintiff posted on September 13 in the Plaintiff's account on
Instagram (hereinafter, referred to as the "Plaintiff's Account") that, with the hashtagof "#地球グミ(CHIKYU-GUMI)" and the like, "On sale again in the beginning of
October!

プラネットグミ(PURANETTO-GUMI) which made a topic will be instock again." and the like with an image of the Plaintiff's Goods and the package andthe individual package thereof (Exhibit Ko 3-1).
(14) PLAZA posted on September 21 in its official account on the Twitter that,with the hashtag of "#地球グミ(CHIKYU-GUMI)" and the like, "The 'big hit #トローリ（TORORI） #プラネットグミ(PURANETTO-GUMI)' will be in stock again
in 'the beginning of October' ... The popular item which will be sold out soon at eacharrival in many shops ... Please get them at this opportunity!

They will be handled at

PLAZA / MINiPLA, PLAZA ONLINE STORE all over Japan" and the like together
with images of the package of the Plaintiff's Goods and the individual package
accommodating the Plaintiff's Goods (Exhibit Ko 30-1).
(15) The Plaintiff posted on September 22 on the Plaintiff's account that, withthe hashtag of "#Muchu To 地球グミ(CHIKYU-GUMI)!" and the like, photos of theindividual package accommodating the Plaintiff's Goods and the package of thePlaintiff's Goods, an image describing characters such as "Muchu to 地 球 グ ミ(CHIKYU-GUMI)!?

Get 地球グミ(CHIKYU-GUMI) at Villa-Van!", and "Present

Campaign is being held for プ ラ ネ ッ ト グ ミ (PURANETTO-GUMI) (地 球 グ ミ(CHIKYU-GUMI)) in the account of Village Vanguard!!" and the like (Exhibit Ko 3 2).
(16) The Plaintiff posted on October 1 on the Plaintiff's account, with thehashtag of "#地球グミ(CHIKYU-GUMI)" and the like, images of the package of thePlaintiff's Goods with the characters of "Trolli" and the like, "Thank you for waiting
so long!

Sales of the very popular 地球グミ(CHIKYU-GUMI) and Pop Eye of the7new product will start soon!!

When you see them at the shop, get them as soon as

possible!!" and the like (Exhibit Ko 3-3).
(17) THANKYOUMART posted on October 1 in their official account on
Twitter that, with the hashtag of "#地球グミ(CHIKYU-GUMI)" and the like together
with images of the Plaintiff's Goods as well as the package, the individual package
thereof, and the like, "That Gummy is back!"

In addition to the resale of "# 地球グ

ミ (CHIKYU-GUMI)", "#Pop Eye Gummy" has arrived... will be on sale at
THANKYOUMART all over Japan from Saturday, October 2 at the shops with thestock!" and the like (Exhibit Ko 39-2).
(18) WEGO Canal City Hakata shop posted on October 3 in the shop accounton Twitter that, with the hashtag of "#地球グミ(CHIKYU-GUMI)" and the like, "地球グミ(CHIKYU-GUMI) which has been very popular and frequently inquired about
are in stock again" and the like (Exhibit Ko 26-2).
(19) Village Vanguard posted on October 14 in their official account on Twitter
that, with the hashtag of "#Muchu to 地球グミ(CHIKYU-GUMI)" and the liketogether with images of the Plaintiff's Goods as well as the package, the individual
package thereof, and the like, "Soon sold out after the sales started ... 地球グミ
(CHIKYU-GUMI) ... Has arrived again!

And resale has started at some shops!!

Please follow Twitter of the Villa-Van shop nearby and get the latest information!!"(Exhibit Ko 27-2).
(20) WEGO LALAPORT Izumi Shop posted on November 3 in the official
account of the shop on Twitter that, with the hashtag of "# 地球グミ(CHIKYUGUMI)" and the like together with images of the package of the Plaintiff's Goo ds andthe like, "Super popular!! 地球グミ(CHIKYU-GUMI) is on sale again today ... Since
the stock is limited, please come to the shop as soon as possible" and the like (Exhibit
Ko 26-5).
(21) A person called "WEGO HIROSHIMA Area" posted on November 3 intheir account on Twitter that, with the hashtag of "#地球グミ(CHIKYU-GUMI)" andthe like together with images of the package of the Plaintiff's Goods and the like,"Super popular in SNS ... 地球グミ(CHIKYU-GUMI) has arrived again today ...
November 3 ... Super! Super! Super popular goods, come to the shop and check it out"
(Exhibit Ko 26-3).
(22) On November 4, on the website of BABYDOT, an article titled "I got thelong-cherished 地 球 グ ミ (CHIKYU-GUMI)!
GUMI), sold out at every Kaldi shop.
(Exhibit Ko 28).

プ ラ ネ ッ ト グ ミ (PURANETTO-

The next arrival is... !?" was publishedThe main text of the article had photos of the Plaintiff's Goods a s8well as the package, the individual package thereof, and the like and the descriptionthat "Could buy it at last after having waited for resale for several months but sold out
immediately! The next arrival would be early in the New Year!!!
goods!

Such popular

I could get it miraculously and tried it", "When I went to Kaldi the other day,there was an announcement that 'Very popular 地球グミ(CHIKYU-GUMI) on Sale,
limited to three pieces for one customer' and I just bought them at once.

There weremany boxes piled up but they were already gone yesterday", "The so-called '地球グミ(CHIKYU-GUMI)', which is popular in SNS ... our child has wanted them for long
but could not get them at all ... I heard that there were some in Kaldi before summer
and I ran to the shop soon, but they were already sold out ... It was said that the next
arrival would be in October.

Waited for three months or more, not yet?

Soon? ... I

went to the shop again and again and at last encountered them! ... I visited Kaldi again
the other day, but 'The next arrival will be early in the New Year'!!", "In SNS, what
has gone viral is that you put it with the package into the mouth and so ftly chew it andthen, the gummi is squeezed out in a slithering manner ...", "I caught the recent?
Trend!

Or I could catch it at last!" and the like.
(23) A person called "WEGO SAPPORO Area" posted on November 5 in his /her account on ex-Twitter that, together with the image of the package of thePlaintiff's Goods and the like, "Thank you for waiting!!

The popular 地球グミ

(CHIKYU-GUMI) and Pop Eye Gummy are in stock again ... They are wildly soldonly in some hours from the arrival!

They are so popular.

Please get them soon"and the like (Exhibit Ko 26-4)(24) WEGO KOORIYAMA Shop posted on November 5 in the shop accounton Twitter that, together with an image of the package of the Plaintiff's Goods and thelike, "Thank you for waiting for the very popular!!

地球グミ(CHIKYU-GUMI) andPop Eye Gummi are in stock now" and the like (Exhibit Ko 26-1).
(25) The Plaintiff posted on November 9 in the Plaintiff's account that, withthe hashtag of "#地球グミ(CHIKYU-GUMI)" and the like together with photos of theindividual package accommodating the Plaintiff's Goods and the package of thePlaintiff's Goods and the image with the characters of "'地球グミ(CHIKYU-GUMI)'
was nominated for the TikTok Buzzwords Contest 2021!!" and the like, "'地球グミ(CHIKYU-GUMI)' was nominated for the TikTok Buzzwords Contest 2021!!" and thelike (Exhibit Ko 3-4).
(26) In NIKKEI MJ as of November 12, the article titled "TikTok usedconveniently by adults" and the like (Exhibit Ko 8-1) was published.

The article

describes that the video posting application "TikTok" has had a presence among a
9

wide variety of generations, many goods and services have gained popularity one after
another with the post to TikTok as a trigger, TikTok has attracted attention as media
which gives birth to hit items and the like.

And as "examples of works / goods 'soldby TikTok'", "'トローリプラネットグミ(TORORI-PURANETTO-GUMI)' (地球グミ(CHIKYU-GUMI)) by MEDERER in Germany" is listed together with D's novel"Lipstick to afterimage", E's musical piece "Perfume", Earth Corporation's pro duct
"RAKU-HAPI-MACH-AWA-BABLOON", and Otsuka Pharmaceutical's product"Fibe-Mini".
(27) In the NIKKEI MJ in the aforementioned (26), articles titled "This year's
trend for women of 15 to 24 years old", "'To-Reve', '地球グミ(CHIKYU-GUMI)",and the like were published (Exhibit Ko 8-2).

The article describes, as the result ofresearch by a research institute of the operating company of SHIBUYA109 of 545
women of 15 to 24 years old, the "SHIBUYA109 lab. TREND AWARD 2021" wasreleased, "地球グミ(CHIKYU-GUMI)" won the second rank in the "Cafe / Gourmet
Section", and that, since the scene of biting the individual package of the " 地球グミ
(CHIKYU-GUMI)" to open it seemed attractive as a video, many imitated the action,and the like.
(28) On January 1, 2022, after the date of filing, "Modern Language Basic
Knowledge 2022" (Exhibit Ko 36) was issued, and the "Food trend" column in"Things / Goods which attracted attention this year" in this book has the descriptionthat "In the hit goods field, 'トローリプラネットグミ (TORORI-PURANETTOGUMI)' made in Germany made a topic with its colloquial term of ' 地 球グミ(CHIKYU-GUMI)' from its appearance." (The characters of "地球グミ(CHIKYUGUMI)" in the description are written in highlighted Gothic script similarly to thecases of other terms ("Non-Alcoholic Drink", "Non-Al", and the like) in the same
column).
2. Grounds for Rescission 1 (Erroneous determination on applicability of
Article 4, paragraph (1), item (x) of the Trademark Act)
(1) Well-known characteristics of Cited Mark 1
A. According to the facts found in the aforementioned 1, regarding the wellknown characteristics of Cited Mark 1, the following circumstances should be
acknowledged.
That is, the Plaintiff's Goods are sweets manufactured by a foreign company
with the name "Trolli Planet Gummi", "Planet Gummi" and the like, and thecharacters of "地球グミ(CHIKYU-GUMI)" in Japanese are not described on the
Plaintiff's Goods, the package, or the individual package thereof.
10

However, thePlaintiff's Goods became very popular in Korea mainly among video contributors andtheir viewers around 2018, but this popularity spilled over to Japan.

And thePlaintiff's Goods became very popular in Japan, too, mainly among video contributors
and their viewers, and by October of the same year, when the Plaintiff started import /sales of the Plaintiff's Goods, some retailers having shops all over Japan called thePlaintiff's Goods "地球グミ (CHIKYU-GUMI)" and began advertisement thereof.
Even after the Plaintiff started import / sales of the Plaintiff's Goods, the Plaint iff's
Goods boasted big popularity, and such a state continued that the Goods were sold out
at the retailers' shops immediately after the sales started, and it became extremely
difficult to obtain the Goods.

Since the Plaintiff started the import / sales of thePlaintiff's Goods, the retailers having shops all over Japan called the Plaintiff's Goods" 地 球 グ ミ (CHIKYU-GUMI)" and repeatedly advertised them.

Moreover, thePlaintiff's Goods enjoyed high popularity as the Goods called "地球グミ(CHIKYUGUMI)" on video contribution websites, too.

The Plaintiff's Goods as above were atlast reported in national papers and sub-key TV stations in Osaka as very popular
goods called "地球グミ(CHIKYU-GUMI)" in June of 2021, and in the TV reporting,
the Goods ranked in the ranking, chosen by the Generation Z, of foods and drinks
which became popular in the first half of the year.

The Plaintiff's Goods were in theend reported by the key TV stations in Tokyo as similarly popular goods in July andwere introduced as goods that young people in their early 20's all knew (the Plaintiff
called the Plaintiff's Goods "地球グミ(CHIKYU-GUMI)" in a TV program in June of
the same year at the latest and began advertisement of the Plaintiff's Goods called " 地
球グミ(CHIKYU-GUMI)" in September of the same year at the latest).

Moreover,the Plaintiff's Goods called "地球グミ(CHIKYU-GUMI)" were introduced in linewith a novel by a famous author, a musical piece by a famous singer and song-writer,
and the like as examples of works or goods which became famous with thecontribution to the video contribution websites as a trigger.

Also, the Goods won thesecond rank in the "Cafe / Gourmet Section" in the award called "SHIBUYA109 lab.
Trend Award 2021", which was the result of research (of 545 women of 15 to 24
years old) by an operating company of a famous commercial facility in Shibuya -Ku.
On the basis of the trend of the Plaintiff's Goods called "地球グミ(CHIKYU-GUMI)"
as above until 2021, "Modern Language Basic Knowledge 2022" issued in January in
2022 picked up the term "地球グミ(CHIKYU-GUMI)", which is a colloquial term of
the Plaintiff's Goods, as goods which attracted attention in 2021 (big-hit food goods).
In light of the aforementioned circumstances, it is reasonable to admit that theterm "地球グミ(CHIKYU-GUMI) (Cited Mark 1) falls under the trademark which11had been widely recognized among consumers (in light of the fact found by thecontents, the nature and facts in the aforementioned 1 of the goods for which Cited
Mark 1 was used, they are found to be consumers of gummi candies including young
people) as the one indicating the Goods (Plaintiff's Goods) related to the business of
the Plaintiff or the manufacturer of the Plaintiff's Goods by the Date of Decision(February 22, 2022) at the latest.
B. The Defendant asserts that Cited Mark 1 had not been used as the trademark,but according to the aforementioned 1(13), (15), (16), and (25), the Plaintiff is foundto have provided the information with the advertisement related to the Plaintiff's
Goods as contents with Cited Mark 1 added by an electromagnetic method, theDefendant's assertion cannot be employed.
(2) Similarity between the Present Trademark and Cited Mark 1
As described in No. 2, 1(5), the Present Trademark is configured by indicating
the characters of the "地球グミ(CHIKYU-GUMI)" in standard characters.

On theother hand, as described in No. 2, 3(1)A(a), Cited Mark 1 is configured by writing thecharacters of the "地球グミ(CHIKYU-GUMI)".
As described above, the Present Trademark and Cited Mark 1 are extremely
ambiguous in their appearances.
Moreover, since the pronunciation of "Earth Gummi" is generated from boththe Present Trademark and Cited Mark 1, they share the name.
Furthermore, in light of those taught in the aforementioned (1)A, the "地球グミ(CHIKYU-GUMI)" is considered to be recognized as a word referring to thePlaintiff's Goods among the consumers and thus, in addition to the conception such as"Gummi candy of the earth", the conception of the "Plaintiff's Goods" (Gummi candywith the goods name of "Trolli Planet Gummi", "Planet Gummi", and the like) can begenerated from the Present Trademark and Cited Mark 1, and they have the same
conception.
According to the above, the Present Trademark has the same pronunciation andconception as those of Cited Mark 1 and is extremely ambiguous in appearance andthus, it is reasonable to acknowledge to be a trademark similar to Cited Mark 1.
(3) Similarity of Goods
As described in the aforementioned No. 2, 1(6) and 3(1)A(b), the designatedgoods related to the Present Trademark and the goods in use related to Cited Mark 1
are both "Gummi candy" and thus, the designated goods of the Present Trademark are
identical with the goods in use related to Cited Mark 1.
(4) Summary12

As described above, the Present Trademark falls under the trademark listed in
Article 4, paragraph (1), item (x) of the Trademark Act (there is no assertion
verification (Article 4, paragraph (3) of the Trademark Act) that the Present
Trademark did not fall under the trademark listed in the same item on the Date ofFiling), and the determination in this JPO Decision different from that is erroneous,and Grounds for Rescission 1 is grounded.
3. Conclusion
As described above, even without determining on Grounds for Rescission 2, thePlaintiff's claims are grounded.
Intellectual Property High Court, Second Division
Presiding Judge: SHIMIZU Hibiku
Judge: ASAI Ken
Judge: KATSUMATA Kumiko13