Trademark Date

April 24, 2024

RightCase2023

number10109

Court(Gyo-Ke)

Intellectual Property High
Court, Fourth Division- A case in which, with respect to a trademark determined to fall under Article 3,paragraph (1), item (iii) of the Trademark Act in the initial decision of refusal but
subsequently determined to fall under item (vi) of the same paragraph in a trial
decision, the court held that, although a separate notice of grounds for refusal underArticle 55-2, paragraph (1) and Article 15-2 of the same Act was required as a generalrule, and the trial proceedings not complying with this procedural requirement
contain a defect (a violation of the law), such defect is not a ground for rescission as
it is not found to affect the result of the trial decision.
- A case in which the court found that the trademark, "奇跡のラカンカ," written inhorizontal direction (the "Trademark"), falls under Article 3, paragraph (1), item (vi)of the Trademark Act.
Case type: Rescission of Appeal Decision of Refusal
Result: Dismissed
References: Article 3, paragraph (1), items (iii) and (vi) of the Trademark Act, andArticle 15-2 of the same Act as applied mutatis mutandis pursuant to Article 55-2,
paragraph (1) of the same Act
Decision of the JPO: Appeal against Examiner's Decision of Refusal No. 2022-6605
Summary of the Judgment

1. This is an action seeking the rescission of a trial decision in which the Japan Patent
Office (JPO) dismissed a request for an appeal against examiner's decision of refusal
with respect to the trademark, "奇跡 のラカ ンカ ," written in horizontal direction,
whose designated goods are Class 30, "confectionery adding Siraitia grosvenorii(excluding fruit-based, vegetable-based, bean-based or nut-based products)" and othergoods (the "Trademark").
2. In the procedures at the JPO, the JPO issued a notice of grounds for refusal and adecision of refusal (the "Initial Decision of Refusal") concerning the Trademark,wherein it is stated that Article 3, paragraph (1), item (iii) of the Trademark Act isapplied for the ground for refusal. In the trial proceedings against this decision, the JPO
served a document titled "Inquiry" upon the Plaintiff, which contains the following
matters: [i] the panel's decision that the Trademark falls under item (vi) of the same1

paragraph and the grounds for this decision; [ii] a statement to the effect that, although
the Initial Decision of Refusal applied item (iii) of the same paragraph for the groundfor refusal of the application, applying item (vi) of the same paragraph does notsubstantially conflict with the findings and decision of the Initial Decision of Refusal
and therefore does not constitute a new ground for refusal; and [iii] a request for theapplicant to submit a written response, if they have any opinion. The Plaintiff made noobjection to this document even after the period for submission of written response, andthe JPO rendered a trial decision that the Trademark falls under item (vi) of the same
paragraph (the "JPO Decision").
3. In its judgment, this court held as follows and dismissed the Plaintiff's claim basedon the findings that the procedural defect in the trial proceedings as argued by thePlaintiff does not amount to a ground for rescission, and that the Trademark falls underArticle 3, paragraph (1), item (vi) of the Trademark Act.
(1) The JPO Decision applied item (vi) of the same paragraph, which is different fromthe provision relied upon in the Initial Decision of Refusal and the notice of grounds
for refusal given prior to it, but no separate notice of grounds for refusal was served
prior to the JPO Decision. However, "grounds for refusal" to be included in a notice ofgrounds for refusal should be understood as the indication of a specific ground forrefusal of registration as provided in the Trademark Act (referenced provision) and theexplanation that the trademark falls under that provision. If a different referenced
provision is to be applied, that fact itself constitutes a "different ground for refusal" asa general rule. As regards the grounds for refusal in the Initial Decision of Refusal andthose in the JPO Decision, as they rely on different referenced provisions in the firstplace, and as no special circumstance is found to exist wherein the findings of thesedecisions are identical in substance such that it is not necessary to provide an applicant
with the opportunity for explanation, it is reasonable to consider that these decisions
are based on "different grounds for refusal." Consequently, the court finds that it wasnecessary to issue a separate notice of grounds for refusal under Article 55-2, paragraph(1) and Article 15-2, and the trial proceedings of the JPO Decision not complying withthese procedures contains a defect (a violation of the law).
(2) However, it is understood that even if a defect exists in trial proceedings, it cannot
be a ground for rescission if it is not determined to affect the conclusion of the trialdecision. In the trial proceedings, a written inquiry notifying the ground for the trial
decision was served upon the Plaintiff in advance, so the Plaintiff was at least given theopportunity for explanation. In addition, the ground for refusal indicated in the written
inquiry and the JPO Decision was based on the argument of the Plaintiff in its written2opinion submitted in response to the notice of grounds for refusal. The JPO accepted
the Plaintiff's argument concerning the meaning of the Trademark in its entirety, butrelied on this argument against the Plaintiff to conclude that the Trademark as
interpreted in that way falls under Article 3, paragraph (1), item (vi) of the Trademark
Act. Based on the totality of the abovementioned circumstances, it is reasonable tounderstand that, although the JPO Decision has a defect as mentioned above in its
proceedings, that procedural defect does not affect the conclusion of the JPO Decision.
(3) The Trademark, when recognized according to commonly understandable meaning,associates "an improbably mysterious fruit Siraitia grosvenorii." In light of the actual
situation of transactions, traders and consumers who come across the Trademark would
not recognize it as indicating that the relevant goods pertain to a business of a particularperson, even when the Trademark is used for its designated goods. Therefore, theTrademark falls under Article 3, paragraph (1), item (vi) of the Trademark Act.

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