Trademark Date

May 19, 2022

Right

Case

2021 (Gyo-Ke)

number

10100

Court

Intellectual Property High
Court, First Division- A case in which the court determined that a trademark, for which the designatedservices are "educational and instruction services related to information management
systems," etc. and which consists of "Scrum Master" indicated in standard characters,
falls under a trademark consisting solely of a mark indicating the quality of theservices in a common manner (Article 3, paragraph (1), item (iii) of the Trademark
Act).
Case type: Rescission of Trial Decision to Maintain
Results: Granted
References: Article 3, paragraph (1), item (iii) of the Trademark Act
Related rights, etc.: Registration No. 6042646
Trial decision: Invalidation Trial No. 2019-890057
Summary of the Judgment
1. The Defendant filed an application for trademark registration of a trademark (atrademark consisting of "Scrum Master" indicated in standard characters; hereinafterreferred to as the "Trademark") for "books," etc. in Class 16 as designated goods and"advertising and publicity services," etc. in Class 35 and "educational and instruction
services

relatedtoinformation

management

systems,

providingelectronic

publications," etc. in Class 41 as designated services. The Defendant received theexaminer's decision for registration in April 2018 and establishment of the trademark
right was registered in May 2018.
The Plaintiffs filed a request for a trial for invalidation of the trademark registrationon the grounds that the Trademark falls under Article 3, paragraph (1), item (iii) of theTrademark Act. The Japan Patent Office (hereinafter referred to as the "JPO")
determined that the registration of the Trademark for "books," etc. in Class 16 and"providing electronic publications," etc. in Class 41 from among the designated goods
and designated services of the Trademark shall be invalidated and that the request for a
trial concerning the remaining designated goods and designated services, including
services, such as "educational and instruction services related to information
management systems," etc. in Class 41 (hereinafter referred to as the "DesignatedServices") was groundless.
The Plaintiffs filed this lawsuit to seek rescission of the part related to theiDesignated Services out of the aforementioned decision made by the JPO (hereinafterreferred to as the "JPO Decision").
2. In this judgment, the court determined as stated below, and concluded that there were
errors in the JPO Decision determining that the Trademark does not fall under Article
3, paragraph (1), item (iii) of the Trademark Act in relation to the Designated Services
and rescinded the part related to the Designated Services from among the JPO Decision.
(1) Article 3, paragraph (1), item (iii) of the Trademark Act stipulates that, conce rning"the trademark consists solely of a mark indicating, in a common manner, in the caseof services, the location of provision, quality, articles to be used in the provision,
efficacy, intended purpose, modes, method or features including time, quantity or priceof provision," it lacks the requirements for registration as a trademark. This is construed
to be because such trademark is a mark to express and indicate, in the case of services,
the location of the provision, quality, articles to be used in the provision, efficacy,intended purpose, and other features in relation to the designated services; any person
would want to use the mark as a necessary and appropriate indication for transactions;and therefore, it is inappropriate for the public interest to approve exclusive use of themark by a specific person; additionally, the mark is generally used and, in many cases,
it lacks the ability to serve as a source identifier of services.
Then, in order to say that a certain trademark is a trademark consisting solely of amark indicating the quality of the designated services in a common manner, it isunderstood to be enough for the trademark to be a necessary and appropriate indication
for transactions as one indicating the quality of services in relation to the designatedservices, and when being used for the designated services, to be generally recognizedby traders and consumers as an indication of service quality also into the future. It isconstrued that the trademark is not required to be actually used for the designatedservices.
(2) The Trademark consists of "Scrum Master" expressed in standard characters and is
a combined trademark that is constituted by the term "Scrum" and the term "Master."
The Trademark generates the pronunciation, "scrum master."Based on the facts found in this case, it is found that, at the time of the examiner's
decision for registration of the Trademark, the term "Scrum" was recognized to indicate
one of the agile software development methods in the field related to computers and IT,
and the term "Scrum Master" is recognized as indicating one of the roles in the "Scrum,"which is one of the agile software development methods.
In addition, the term "master" generally means "owner, head, ruler," "to acquire, tobecome expert in," etc. Therefore, it is found that the term "Scrum Master" generates aii

concept of a person who acquired "Scrum," which is one of the agile softwaredevelopment methods and a person who becomes an expert in "Scrum."
Then, if the Trademark is used for "education and training, workshops, and seminars,etc." that are included in the Designated Services, it can be said that traders andconsumers understand that the education and training, etc. are for the acquisition of"Scrum," which is one of the agile software development methods, or are education andtraining, etc. related to a specific role in "Scrum." Therefore, it is reasonable to findthat the Trademark is generally recognized to indicate the quality (details) of said
services.
The Trademark is found to be comprised of standard characters and consist solelyof a mark indicating the characters of "Scrum Master" in a common manner. Therefore,
the Trademark is found to fall under a trademark consisting solely of a mark indicating
the quality (details) of the Designated Services in a common manner (Article 3,
paragraph (1), item (iii) of the Trademark Act).

iii

Judgment rendered on May 19, 2022
2021 (Gyo-Ke) 10100, Case of seeking rescission of the JPO decision
Date of conclusion of oral argument: March 29, 2022
Judgment
Plaintiff: KDDI Corporation
Plaintiff: Scrum Inc.
Plaintiff: ESM, Inc.
Plaintiff: Scrum Inc. Japan
Plaintiff: Attractor Inc.
Plaintiff: agilergo consulting corp.
Plaintiff: OGIS-RI Co.,Ltd.
Plaintiff: Growth Architectures & Teams, Inc.
Plaintiff: atWare, inc.
Plaintiff: Kabushiki Kaisha Exin Japan
Plaintiff: Creation Line, Inc.
Plaintiff: ITpreneurs Japan/Asia Pacific Inc.
Plaintiff: Non-profit organization "Scrum Tokyo"

Defendant: Kabushiki Kaisha Ark
Main text
1. Out of the decision made by the Japan Patent Office (hereinafter referred to as the"JPO") on July 21, 2021, concerning Invalidation Trial No. 2019-890057, the part
related to services stated in Attachment 2 of Trademark Registration No. 6042646 shallbe rescinded.
2. The Defendant shall bear the court costs.
Facts and reasonsNo. 1 Claim
Same as paragraph 1 of the main text.
No. 2 Outline of the case
1. Outline of procedures at the JPO(1) The Defendant is a holder of the trademark right for the following trademark,
Trademark Registration No. 6042646, (hereinafter referred to as the "Trademark")(Exhibits Ko 2 and 396).
１

Trademark: Scrum Master (in standard characters)
Date of application for registration: June 19, 2017
Date of examiner's decision for registration: April 17, 2018
Date of registration of establishment: May 11, 2018
Designated goods and designated services: As stated in Attachment 1(2) The Plaintiffs filed a request for a trial for trademark invalidation concerning theTrademark on September 27, 2019 (Exhibit Ko 379).
The JPO examined the request as Invalidation Trial No. 2019-890057. On July 21,
2021, the JPO made the following decision (hereinafter referred to as the "JPO
Decision"): "From among the designated goods and designated services of Trademark
Registration No. 6042646, registration related to Class 16 'teaching materials, books,
periodicals, and printed matters' and Class 41 'providing electronic publications,providing still images, dynamic images, still images with sound, dynamic images withsound, videos, electronic publications, and educational information throughtelecommunications lines' shall be invalid. The request for a trial concerning theremaining designated goods and designated services is groundless." The certified copy
was served upon the Plaintiffs on July 29, 2021.
(3) The Plaintiffs filed this lawsuit to seek rescission of the part related to services asstated in Attachment 2 (hereinafter referred to as the "Designated Services") out of the
JPO Decision on August 27, 2021.
2. Summary of the grounds for the JPO Decision(1) Grounds for the JPO Decision are as stated in Attachment, "Written Decision(copy)."The summary of the JPO Decision is as follows: The Trademark for Class 16"teaching materials, books, periodicals, and printed matters" and Class 41 "providing
electronic publications, providing still images, dynamic images, still images with sound,
dynamic images with sound, videos, electronic publications, and educational
information through telecommunications lines" (hereinafter collectively referred to as
the "Goods and Services" in some cases) from among the designated goods anddesignated services thereof falls under Article 3, paragraph (1), item (iii) and Article 4,paragraph (1), item (xvi) of the Trademark Act and, therefore, the registration should
be invalidated pursuant to the provisions of Article 46, paragraph (1) of said Act;
However, designated goods and designated services other than the Goods and Services
do not fall under any of the main sentence, item (iii) and item (iv) of Article 3, paragraph(1), and item (vii) and item (xvi) of Article 4, paragraph (1) of said Act and, therefore,
the registration should not be invalidated pursuant to the provisions of Article 46,
２paragraph (1) of said Act.
(2) The summary of the grounds why the JPO Decision determined that the Trademark
does not fall under Article 3, paragraph (1), item (iii) of the Trademark Act in relation
to designated goods and designated services other than the Goods and Services is as
stated below.
A. Taking account of the facts found in this case comprehensively, it can be said that asof the time of the examiner's decision for registration of the Trademark, "Scrum Master"
was understood and recognized in the field related to computers and IT as a term
representing one of the roles in a "Scrum," which is one of the agile softwaredevelopment methods.
B. In today's advanced information and communications network society, where thenumber of internet users has increased rapidly, the scope of any consumer group that
intends to acquire knowledge about the software development methods has also
expanded. The consumers who intend to acquire knowledge about the relevant
development methods ordinarily turn to the use of books, education and training,
workshops, seminars, and other means. It is found that books and articles mentioning"Scrum Master" had been published before the examiner's decision for registration of
the Trademark from 2003 through 2017. Articles on certification systems, training,seminars, etc. related to "Scrum Master" were seen in magazines and websites, etc. thatwere published or created before the examiner's decision for registration of theTrademark from 2003 through 2018.
However, the evidence related to training and seminars, etc. specializing only in"Scrum Master" is limited and there is no concrete evidence on the explanation of thespecific details thereof and the size or the frequency of the training and seminars, etc.
In addition, it cannot be said that there are a large number of persons certified under thecertification system for "Scrum Master."Based on the above, it is difficult to say that the Trademark makes people understandthat it is the services for "Scrum Master" from among the designated goods anddesignated services of the Trademark in a relationship with services related to educatio n
and training, workshops, and seminars, etc. in Class 41.
C. In a relationship with the Goods and Services, the Trademark only indicates thequality of the goods or the quality (details) of the services when it is used for goods andservices for "Scrum Master" that is one of the roles in a "Scrum," which is one of theagile software development methods. The Trademark does not function as a source
identifier of goods and services and, therefore, it falls under Article 3, paragraph (1),item (iii) of the Trademark Act.
３

On the other hand, according to evidence submitted by the Plaintiffs (demandants),
concerning designated goods and designated services other than the Goods and Services,
it cannot be said that the characters of the Trademark, "Scrum Master," are generally
used as ones directly indicating the quality of goods and the quality of services, etc. andno special circumstances can be found to consider that traders and consumers who comeacross the Trademark recognize the Trademark as the quality of goods and the qualityof services, etc. Therefore, it cannot be said that the Trademark indicates the quality ofgoods and the quality of services when being used for designated goods and designatedservices other than the Goods and Services. Therefore, the Trademark can fulfill thefunction as a source identifier of goods and services.
Consequently, the Trademark does not fall under Article 3, paragraph (1), item (iii)of the Trademark Act in relation to designated goods and designated services other thanthe Goods and Services.
3. Grounds for rescission
Error in the determination as to whether the Designated Services of the Trademark(part of designated goods and designated services other than the Goods and Services)
fall under Article 3, paragraph (1), item (iii) of the Trademark Act

No. 4 Decision of this court
1. Facts found in this case(1) The following facts are found based on the evidence.
A. The term "Scrum" is treated as a "flag word" in the "Dictionary of the Latest
Computer & Information Technology Terms" (Exhibits Ko 32 through 34; published on
January 10, 2009, April 1, 2010, and April 25, 2011, respectively), "Standard Glossaryof Terms Used in Software Testing (Japanese version)" (Exhibit Ko 35; published on
March 28, 2014), "IT Yougo Jiten e-Words (IT Glossary Dictionary e-Words)" (Exhibit
Ko 36; created on February 7, 2015) and the term is explained as one of the agile
software development methods.
In addition, the term "Scrum" is described in the "Dictionary of the Latest Computer& Information Technology Terms" as "it is characterized by the development approachin software development that the following procedures are implemented repetitively:
Creation of software → Operation check → Commercialization" and in "IT Yougo Jiten
e-Words (IT glossary e-Words)" that "Scrum is one of the software development
methods and a method that is composed mainly of the methodology to engage in work
as an entire team." It is also described in Wikipedia (Exhibit Ko 31; last update on
４October 31, 2017) that "Scrum" is one of the repetitive and progressive agile softwaredevelopment methods.
B. "Scrum Master" is described in the description of the "term" of "Scrum" in "IT Yougo
Jiten e-Words (IT glossary e-Words)" (Exhibit Ko 36) as "In the team, ... there is aposition called 'Scrum Master,' serving to coordinate inside and outside the team and asa point of contact for outside the team."
In addition, in Wikipedia, according to the last update on October 31, 2017 (Exhibit
Ko 31), "Scrum Master" is described as "a role guaranteeing that a scrum framework is
applied appropriately," and in "Agile Yogoshu (Agile Glossary)" (Exhibit Ko 38), it isdescribed as "Scrum has a role called 'Scrum Master' that is like a combination of theroles of a coach and a manager."C. The "Scrum Guides" authored by Jeff Sutherland and Ken Schwaber, who are
advocates of "Scrum," (Exhibits Ko 39 through 42; published on October 2011, July
2013, July 2016, and November 2017, respectively) explain the definition, rules, etc. of"Scrum." They define "Scrum" as follows: "Scrum is a framework for developing andmaintaining complicated products."; "Scrum consists of a scrum team and its roles,
events, deliverables, and rules."; and "A Scrum team consists of a product owner,
development team, and scrum master." In addition, "Scrum Master" is described as "The
Scrum Master is responsible for the understanding and establishment of a scrum.
Therefore, the Scrum Master instructs the scrum team to comply with scrum theory,
practices and rules. The Scrum Master is a servant leader of the scrum team, (...)."
D. In "Nikkei Computer," "Nikkei Systems," "Nikkei IT Professional," "Nikkei
Software," etc. and other magazines related to computers and IT that were published
for the period from 2003 until the date of the examiner's decision for registration of theTrademark (April 17, 2018) (Exhibits Ko 44, 48, 49, 69, 76, 114, 124, 136, 139, 141,
146, 154, 156 through 158, 160, 161, 165, 181, 184, 186, 190, 194 through 198, 205
through 207, 209, 214, and 215), there are descriptions related to "Scrum Master" inarticles with the main theme of "agile software development" and "Scrum."For example, in "Nikkei Computer vol. 585" published on October 20, 2003
(Exhibit Ko 44), there are statements that “Scrum” is a project management method,that it has been adopted as much as several thousand times overseas, and that it has
been partially adopted by a system integrator, Kabushiki Kaisha Mamezou, andZennikku System Kikaku Kabushiki Kaisha in Japan; and there are also statements
concerning "Scrum Master" that it "holds the key of the scrum team," "creates a team,organizes various kinds of meetings, makes decisions, and takes all possible measures
to eliminate hindrances to operations," "is any of team leader, project leader, or project５manager," and "is required to have high skills in both technology and management."
In addition, "Nikkei IT Professional vol. 34" published on March 1, 2005 (Exhibit
Ko 124) contains the following statements: There is a "Scrum Master" that corresponds
to a project manager as a project member of a "Scrum"; "The role of the Scrum Masteris important in keeping the independence of the scrum team"; The "Scrum Master""protects the scrum team from 'hindrances' to development and helps them dedicate
themselves to development."
E. On websites and blogs, etc. that were created for the period from 2004 until the dateof the examiner's decision for registration of the Trademark (Exhibits Ko 53, 58, 242,
243, 252, 254, 256, 258, 259, 261 through 269, and 271), there are statements related
to "Scrum Master" in articles with the main theme of "agile software development" and"Scrum."For example, in the article on the website published on October 5, 2004, "Agile
Kaihatsu Shuhou 'Scrum' no Shinjitsu (Truth of the Agile Development Method'Scrum') (1/3)" (Exhibit Ko 242), there is a statement that "The Scrum Master is, in
simple terms, a project manager in the Scrum. The Scrum Master engages in progresscontrol, requirement control, and other regular duties to be implemented by a project
manager and also provides technical instructions and advice as a mentor to engineers
in the team. Therefore, the Scrum Master is required to have a high level of quality asa software engineer."
F. Books published for the period from 2003 until 2016, "Agile Software Kaihatsu
Scrum (Agile Software Development Scrum)" (Exhibit Ko 282; published on
September 20, 2003), "Scrum Nyumon - Agile Project Management (Introduction to
Scrum - Agile Project Management)" (Exhibit Ko 284; published on September 13,2004), "Jissen! Agile Project Kanri (Practice! Agile Project Management)" (Exhibit Ko285; published on November 10, 2009), "Agile Samurai" (Exhibit Ko 294; publishedon July 25, 2011), "Agile na Game Kaihatsu (Agile Game Development)" (Exhibit Ko286; published on September 3, 2012), "Scrum wo Katsuyoushita Agile na ProductKanri (Agile Product Management Using Scrum)" (Exhibit Ko 287; published on
November 30, 2012), "Scrum Bootcamp, the Book" (Exhibit Ko 289; published on
February 12, 2013), "Essential Scrum" (Exhibit Ko 292; published on July 7, 2014),"Scrum - Shigoto ga 4 bai Hayakunaru 'Sekaihyoujun' no Team Senjutsu (Scrum 'World Standard' Team Tactics that Accelerate Your Work Fourfold)" (Exhibit Ko 293 ;published on June 25, 2015), and "Scrum Gemba Guide (Scrum Front-Line Guide)"(Exhibit Ko 295; published on February 29, 2016), are mainly about "Agile Software
Development" and "Scrum" and they contain statements concerning the "Scrum
６

Master."
In addition, articles posted on magazines published before the examiner's decision
for registration of the Trademark, "Apply Agile Development methodology SCRUM to
PBL" (Exhibit Ko 298; published in 2010), "2408 The Characteristics and the Real
Value of Agile Development" (Exhibit Ko 299; published in 2011), "Evaluation of
Scrum to improve value of systems" (Exhibit Ko 300; published in September 2013),
and "Application Example of SCRUM Development Method in the Integration of Intracompany Business Systems" (Exhibit Ko 308; published on June 15, 2017), are mainly
about "agile software development" and "Scrum," and they contain statements
concerning "Scrum Master."G. (A) In June 2009, "Scrum Master Workshop" authorized by Scrum Alliance Inc. washeld (Exhibit Ko 46).
(B) The Plaintiff, agilergo consulting corp., held "Certified Scrum Master Training" in
October 2011, January 2012, January 2013, October 2013 (held twice), June 2014,
October 2014, May 2015, October 2015, January 2016, May 2016, September 2016,
January 2017, June 2017, October 2017, and January 2018 (held twice) (Exhibits Ko
384-14, 384-16-1 through 384-16-9).
(C) Enterprise Scrum (co-hosted by the Plaintiff, Attractor Inc.) held "Certified Scrum
Master Training" twice in January 2014 (Exhibit Ko 384-15).
(D) Hitachi Solutions, Ltd. held a seminar titled "Acquiring Certified Scrum Master(CSM) Certification" in around August 2016 (Exhibit Ko 384-7).
(E) The Plaintiff, KDDI Corporation, the Plaintiff, Scrum, Inc., and the Plaintiff, ESM,
Inc., held "Certified Scrum Master Training" in February 2017 and subsequently the
aforementioned three companies held said training four times until March 19, 2018
(Exhibits Ko 80 through 82, 88, 89, 384-1, and 384-8).
(F) Digital Business Innovation Center held a training titled "Learning the Roles of a
Scrum Master" (Exhibit Ko 384-5).
(G) By April 2018, the number of persons who acquired certification as "Certified
Scrum Master" (certification certified by Scrum Alliance Inc.) in Japan was 3,310 andtraining for "Certified Scrum Master" was held 163 times (Exhibits Ko 384-17 and 3855).
H. Magazines and websites, etc. published or created for the period from 2004 until thedate of the examiner's decision for registration of the Trademark (Exhibits Ko 46, 48,
80 through 83, 88, 89, 165, 207, 242, 244, 259, and 270), contain articles relat ed to thecertification system of "Scrum Master," training sessions, and seminars, etc.
For example, "Nikkei Computer vol. 743" published on November 11, 2009 (Exhibit７

Ko 48) contains an article stating that "A company providing training and consulting
specialized in agile development, Odd-e Japan, strengthens its certification acquisition
services for 'Scrum,' which is one of the agile development methods. The company
determined to hold certified workshops to train 'Scrum Masters' in Tokyo and Osaka
four times or more in 2010. ... 160 persons are expected to be certified. The number ofcertified Scrum Masters in Japan was approximately 150. Therefore, it will be doubled
all at once." In "Nikkei Systems vol. 297" published on January 1, 2018 (Exhibit Ko207), there is a statement that "As of October 2017, 310 persons have certification as'Certified Scrum Master (CSM)'."(2) According to the facts found in this case in (1) above, the following matters arefound: [i] the term "Scrum" is explained to be one of the agile software development
methods in dictionaries and glossaries for computers and IT that were published or
created before the examiner's decision for registration of the Trademark ((1) A. above);[ii] the term "Scrum Master" is described as a name of a role in the "Scrum," which isone of the agile software development methods, in online dictionaries, etc. created
before the examiner's decision for registration of the Trademark ((1) B. above); [iii] the"Scrum Guides" authored by the advocates of the "Scrum" explain the definition of"Scrum Master" ((1) C. above); [iv] in multiple books, magazines, websites, and blogs
related to computers and IT published before the examiner's decision for registration of
the Trademark, there are statements concerning the "Scrum Master" in articles, etc. withthe themes of "agile software development" and "Scrum" ((1) D. through F. above); [v]multiple groups held training sessions for Scrum Masters multiple times for the period
from 2009 through April 2018 ((1) G. above); and [iv] in magazines and websites, etc.
published or created before the examiner's decision for registration of the Trademark,there are statements concerning the certification system for "Scrum Masters," training
sessions, and seminars ((1) H. above).
Taking [i] through [vi] above into account comprehensively, it is found that, at thetime of the examiner's decision for registration of the Trademark, the term "Scrum" wasrecognized to indicate one of the agile software development methods in the field
related to computers and IT and the term "Scrum Master" was recognized as indicating
one of the roles in a "Scrum," which is one of the agile software development methods.
2. Whether the Trademark falls under Article 3, paragraph (1), item (iii) of theTrademark Act(1) Article 3, paragraph (1), item (iii) of the Trademark Act stipulates that, concerning"the trademark consists solely of a mark indicating, in a common manner, in the caseof services, the location of provision, quality, articles to be used in the provision,８

efficacy, intended purpose, modes, method or features including time, quantity or priceof provision," it lacks the requirements for registration as a trademark. This is construed
to be because such trademark is a mark to express and indicate, in the case of services,
the location of the provision, quality, articles to be used in the provision, efficacy,intended purpose, and other features in relation to the designated services; any person
would want to use the mark as a necessary and appropriate indication for transactions;and therefore, it is inappropriate for the public interest to approve exclusive use of themark by a specific person; additionally, the mark is generally used and, in many cases,
it lacks the ability to serve as a source identifier of services.
Then, in order to say that a certain trademark is a trademark consisting solely of amark indicating the quality of the designated services in a common manner, it isunderstood to be enough for the trademark to be a necessary and appropriate indication
for transactions as one indicating the quality of services in relation to the designatedservices, and when being used for the designated services, to be generally recognizedby traders and consumers as an indication of service quality also into the future. It isconstrued that the trademark is not required to be actually used for the designatedservices.
Based on the above, whether the Trademark falls under Article 3, paragraph (1),item (viii) of the Trademark Act in a relationship with the Designated Services is
examined below.
(2) The Trademark consists of "Scrum Master" expressed in standard characters and is
a combined trademark that is constituted by the term "Scrum" and the term "Master."
The Trademark generates the pronunciation, "scrum master."
As found in 1. (2) above, it is found that, at the time of the examiner's decision forregistration of the Trademark, the term "Scrum" was recognized to indicate one of theagile software development methods in the field related to computers and IT and theterm "Scrum Master" was recognized as indicating one of the roles in the "Scrum,"which is one of the agile software development methods.
In addition, the term "master" generally means "owner, head, ruler," "to acquire, tobecome expert in," etc. (Kojien Dictionary, the 7th edition; Exhibit Ko 391-2-2).
Therefore, it is found that the term "Scrum Master" generates a concept of a person who
acquired "Scrum," which is one of the agile software development methods, and aperson who becomes an expert in "Scrum."
Then, if the Trademark is used for "education and training, workshops, and seminars,etc." that are included in the Designated Services, it can be said that traders andconsumers understand that the education and training, etc. are for the acquisition of
９

"Scrum," which is one of the agile software development methods, or are education andtraining, etc. related to a specific role in "Scrum." Therefore, it is reasonable to findthat the Trademark is generally recognized to indicate the quality (details) of said
services.
The Trademark is found to be comprised of standard characters and consist solelyof a mark indicating the characters of "Scrum Master" in a common manner. Therefore,
the Trademark is found to fall under a trademark consisting solely of a mark indicating
the quality (details) of the Designated Services in a common manner (Article 3,
paragraph (1), item (iii) of the Trademark Act).
(3) In this regard, the JPO Decision first stated that the evidence related to training andseminars, etc. specialized in "Scrum Master" is limited; there is no explanation on their
specific details and no concrete evidence on the size and the frequency of the training
and seminars, etc.; it cannot be said that the number of certified persons under the"Scrum Master" certification system is large; therefore, it is difficult to say that theTrademark makes people understand that it means the services of "Scrum Master" in a
relationship with the services of Class 41, education and training, workshops, andseminars, etc. from among the designated goods and designated services of theTrademark. Then, the JPO decision determined as follows: it cannot go so far as to saythat the characters of "Scrum Master" in the Trademark are commonly used as those
directly indicating the quality of goods and the quality of services, etc.; there are no
special circumstances to find that traders and consumers who come across theTrademark would recognize the Trademark as the quality of goods and the quality ofservices, etc.; and therefore, the Trademark does not fall under Article 3, paragraph (1),item (iii) of the Trademark Act in relation to designated goods and designated services
other than the Goods and Services, including the Designated Services.
However, as explained in (1) above, in order to say that the Trademark is atrademark consisting solely of a mark indicating the quality of the designated services
in a common manner, it is understood to be enough for the Trademark to be a necessary
and appropriate indication for transactions as one indicating the quality of services inrelation to the Designated Services, and when being used for the Designated Services,to be generally recognized by traders and consumers of the Trademark as an indicationof service quality also into the future. It is construed that the Trademark is not required
to be actually used for the Designated Services. Therefore, there is an error in thepremise of the aforementioned JPO Decision.
3. Allegation of the Defendant
The Defendant alleged as follows: [i] According to the purport of Article 3,
１０paragraph (1), item (iii) of the Trademark Act, a trademark that may not be registeredunder this item is limited to "a trademark that will be commonly used in the fut ure
without fail"; however, there is no evidence that the Trademark will be "commonly usedin the future without fail." The use of the Trademark was limited at the time of theexaminer's decision for registration, and the Trademark had no public recognition at all
and was not commonly recognized, but was rather obscure; [ii] It is not found thatparticipation in seminars and training related to Scrum Master and acquisition ofqualifications and certifications were implemented in many cases before the examin er's
decision for registration of the Trademark. "Scrum Master" was not recognizedcommonly as a qualification, and the number of seminars held and the number ofcertified persons were small; [iii] The Trademark is a coined word created only by
combining the term "Scrum" and the term "Master" and the Trademark does not
generate any specific concept; [iv] For the period of 12 years and 8 months from
October 2004, which is the earliest time when the use of the term "Scrum Master" wasfound based on the evidence, until June 2017, when the Defendant filed an application
for registration of the Trademark, the Plaintiffs did not file an application forregistration of the Trademark. This fact is the evidence proving that no one wanted touse it, and the Trademark does not fall under a trademark that "anyone would want touse." Therefore, the Trademark does not fall under Article 3, paragraph (1), item (iii) of
the Trademark Act in relation to the Designated Services.
However, concerning [i] through [iii], as explained in 2. (1) and (2) above, in orderto say that the Trademark falls under said item in relation to the Designated Services, it
is enough for the Trademark to be a necessary and appropriate indication fortransactions as one indicating the quality of services in a relationship with the
Designated Services, and when being used for the Designated Services, to be generally
recognized by traders and consumers of the Trademark as an indication of service
quality also into the future. It is not limited to "a trademark that will be commonly usedin the future without fail" as alleged by the Defendant, but it is construed that theTrademark is not always required to be actually used for the Designated Services.
Therefore, the degree of use and whether the Trademark is publicly recognized or not
do not matter.
In addition, as explained in 1. (2) above, it is found that, at the time of the examiner's
decision for registration of the Trademark, the term "Scrum Master" was recognized as
an indication of one of the roles in a "Scrum," which is one of the agile softwaredevelopment methods, in the field of computers and IT. It is also found that the term
"Scrum Master" generates the concept of a person who has acquired "Scrum," which is
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one of the agile software development methods, and a person who has become an expert
in "Scrum" (2. (2) above). Therefore, it cannot be said that the Trademark was notcommonly recognized or was in obscurity among consumers of the Designated Services
and that special concepts are not generated at all from the Trademark.
Concerning [iv], requiring the use of a term and filing an application for trademark
registration for the term are different matters. It cannot be said that the Trademark does
not fall under a trademark that "anyone would want to use" based on the fact that thePlaintiffs did not file an application for registration of the Trademark.
Therefore, the aforementioned allegation of the Defendant is groundless.
The Defendant made other claims; however, none of them have an impact on thedetermination in 2. above.
No. 5 Conclusion
As mentioned above, since there were errors in the JPO Decision determining that
the Trademark does not fall under Article 3, paragraph (1), item (iii) of the Trademark
Act in relation to the Designated Services, there are grounds for the rescission allegedby the Plaintiffs.
Consequently, the JPO Decision should be rescinded, and the judgment is rendered
as indicated in the main text.
Intellectual Property High Court, First Division
Presiding judge: OTAKA Ichiro
Judge: OGAWA Takatoshi
Judge KOBAYASHI Yasuhiko cannot affix his signature and seal due to personnel
transfer.
Presiding judge: OTAKA Ichiro

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(Attachment 1) Designated goods and designated services of the Trademark
Class 16
Paper and cardboard; stationery; teaching materials; books; periodicals; printed
matters; paintings and calligraphic works; photographs; and photograph stands
Class 35
Advertising and publicity services; public relations; publicity material rental;
promoting the goods and services of others through the administration of sales andpromotional incentive schemes involving trading stamps; business management
analysis or business consultancy; providing business management consultancy andinformation; providing business improvement consultancy and information; businessproject management using best practices; providing information on operational
efficiency improvement and consultancy using benchmarking (comparative analysis);business management analysis including risk assessment analysis; providing
information and consultancy concerning business management and business; business
management for optimal allocation of business management sources; business
management consultancy for optimal allocation of business management resources;
marketing research and its appraisals; consultancy on marketing research and corporate
marketing business; business management appraisals and analysis of business
management efficiency; business project appraisals; commercial or industrial
management assistance; marketing research or analysis; providing information
concerning commercial sales; marketing; providing marketing information; business
management and organization consultancy; business appraisals; business management
analysis; business research; providing statistical information; personnel management;
creation of business reports; office functions, namely filing, in particular documents ormagnetic tapes; compilation of information into computer databases; data input anddata creation services; systemization of information into computer databases; file
management using computer databases; data search in computer files for others; storing
information on computer databases; employment agency services; personnel
recruitment; personnel referral; providing employment information; operating online
auctions; and auctioneering
Class 41
Educational and instruction services relating to arts, crafts, sports or generalknowledge; educational and instruction services related to information management
systems; educational and instruction services related to the use of information
technology; educational and instruction services related to the above using computers
and telecommunications; educational and instruction services related to the
１３organizational business management and on the activities for business transformation
management, business improvement, and support; educational and instruction services
related to the development of abilities for management, communication, sales,
leadership, and human resource development; providing consulting, consultancy, andinformation on education and training related to the development of abilities for
management, communication, sales, leadership, and human resource development;
educational and instruction services related to the management and creation ofprograms, projects, and portfolios; coaching (educational and instruction services);organization of certification and granting qualifications and providing information
related thereto; organization or implementation of qualifying tests and certification tests
and providing information related thereto; creation of examination questions; providing
educational information; arranging, conducting and organization of seminars; providing
consultancy and information related to arranging, operating, and organization ofseminars, symposiums, conferences, lecture meetings, workshops, colloquiums, andlecture classes on business, business strategy, science, and technology; providing
consultancy and information related to arranging, operating, and organization of otherseminars, symposiums, conferences, lecture meetings, workshops, colloquiums, andlecture classes; providing electronic publications; services of reference libraries forliterature and documentary records; services of reference libraries using communication
terminals through internet or computer networks; book rental; publication of books;
publication of books related to provision of education and knowledge, educational andinstruction services, and business management (excluding publicity texts); publicationof other books, magazines, periodicals, leaflets, catalogs, and other publications(excluding publicity texts); production of videotape film in the field of education,
culture, or entertainment (not for movies or television programs and not for advertisingor publicity); rental of paintings and calligraphic works; rental of image-recorded
magnetic tapes; rental of records or sound recorded magnetic tapes; rental of reversal
films; rental of film negatives; toy rental; providing facilities for movies, shows, plays,
music or educational training; providing sound, music, still images, and videos throughcommunication networks (excluding those that can be downloaded); providing still
images, dynamic images, still images with sound, dynamic images with sound, video s,
electronic publications, educational information through telecommunications lines;
language interpretation; and translation

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(Attachment 2) Designated Services
Class 41
Educational and instruction services relating to arts, crafts, sports or generalknowledge; educational and instruction services related to information management
systems; educational and instruction services related to the use of information
technology; educational and instruction services related to the above using computers
and telecommunications; educational and instruction services related to theorganizational business management and on the activities for business transformation
management, business improvement, and support; educational and instruction services
related to the development of abilities for management, communication, sales,
leadership, and human resource development; providing consulting, consultancy, andinformation on education and training related to the development of abilities for
management, communication, sales, leadership, and human resource development;
educational and instruction services related to the management and creation ofprograms, projects, and portfolios; coaching (educational and instruction services);organization of certification and granting qualifications and providing information
related thereto; organization or implementation of qualifying tests and certification tests
and providing information related thereto; creation of examination questions; providing
educational information; arranging, conducting and organization of seminars; providing
consultancy and information related to arranging, operating, and organization ofseminars, symposiums, conferences, lecture meetings, workshops, colloquiums, andlecture classes on business, business strategy, science, and technology; providing
consultancy and information related to arranging, operating, and organization of otherseminars, symposiums, conferences, lecture meetings, workshops, colloquiums, andlecture classes; services of reference libraries for literature and documentary records;
and services of reference libraries using communication terminals through internet orcomputer networks

１５