Trademark Date

August 30, 2021

Right

Case

2020

number

10126

Court

(Gyo-Ke)Intellectual Property High
Court, First Division- If a sound that composes a trademark consisting of a sound is generally recognized
as a sound that indicates the name of a person, the sound trademark cannot beregistered as a trademark including "the name of another person" as set forth in
Article 4, paragraph (1), item (viii) of the Trademark Act pursuant to said item, except
for those sounds for which the registration has been approved by the person
concerned. However, in light of the transaction status, if a person who comes acrossthe sound trademark cannot be found to usually associate it with or recall the nameof a person based on the sound that composes the sound trademark, it cannot be said
that the sound is recognized as one that generally indicates the name of a person.
Therefore, the sound trademark does not correspond to a trademark including "thename of another person" as set forth in said item.
- A case in which the court determined that a sound trademark consisting of a musicalelement written in a staff notation and the linguistic element of lyrics of "マツモトキヨシ" (Matsumotokiyoshi) indicated in katakana does not fall under a trademark
including "the name of another person" as set forth in Article 4, paragraph (1), item
(viii) of the Trademark Act.
Case type: Rescission of Appeal Decision of Refusal
Results: Granted
References: Article 4, paragraph (1), item (viii) of the Trademark Act
Related rights, etc.: Trademark Application No. 2017-007811
Decision of the JPO: Appeal against Examiner's Decision of Refusal No. 2018-8451(Trademark for which registration is sought)

Summary of the Judgment
1. This is a case of a litigation seeking rescission of the decision made by the JPO (the"JPO Decision") concerning a trademark consisting of the aforementioned sound, foriwhich the Plaintiff filed an application for trademark registration but was refused, andan appeal filed by the Plaintiff was also dismissed.
2. In this judgment, the court held as outlined below and rescinded the JPO Decisionon the grounds that there was an error in the decision as to whether the Trademark in
the Application falls under Article 4, paragraph (1), item (viii) of the Trademark Act.
(1) The Trademark in the Application
A. A sound trademark is a trademark that is recognized by people's sense of hearing. In
cases of obtaining a trademark registration for a sound trademark, that fact must be
indicated in the application form, information necessary for identifying the sound forwhich trademark registration is sought by using letters or staff notation or their
combination must be indicated in the "Trademark for which registration is sought"
column in the application form, and materials that are specified by the Order of the
Ministry of Economy, Trade and Industry ("sound file") must be attached. In cases ofindicating a trademark in staff notation, the sound for which trademark registration issought is to be identified by stating music notes, clefs, time signatures, and tempos ora linguistic element (if lyrics, etc. are included) and rest symbols as necessary in the"Trademark for which registration is sought" column.
B. The Trademark in the Application is a sound trademark consisting of a musicalelement stated in a staff notation and the linguistic element of lyrics of "マツモトキヨシ" (Matsumotokiyoshi) indicated in katakana. The sound consisting of a linguistic
element in the composition of the Trademark in Application is pronounced as"matsumotokiyoshi." In addition, the sound that emits the linguistic element of "マツモトキヨシ" (Matsumotokiyoshi) in a male voice with a musical element, such as arhythm, melody, etc., is recorded in the sound file attached to the application form of
the Application.
(2) Whether the Trademark in the Application falls under Article 4, paragraph (1), item
(viii) of the Trademark Act
A. Article 4, paragraph (1), item (viii) of the Trademark Act stipulates that a trademark
containing the portrait of another person, or the name of another person, or well-known
abbreviation thereof, etc. may not be registered except for those for which theregistration has been approved by the person concerned. The purport of this item isconstrued to protect the moral interest that a person's name, etc. shall not be used in a
trademark without the approval of the person concerned.
In the light of the purport of said item, if the sound composing a sound trademark
is generally recognized as indicating the name of a person, the sound trademark is
construed as a trademark containing "the name of another person" and cannot beii

registered pursuant to said item except for a sound for which the registration has been
approved by the person concerned.
In addition, said item is a provision with the intention of balancing the interest of
an applicant to receive a trademark registration and the moral interest related to thename, etc. of another person. Even if there is a person whose name is pronounced in thesame way as the sound that composes a sound trademark, it cannot be construed thatthe provision stipulates to always prioritize the moral interest related to the name ofanother person even in cases where the sound is not generally recognized as one thatindicates the name of a person.
Based on the above, even if there is a person with a name identical to t he soundcomposing a sound trademark, if it cannot be found that a person who comes across thesound trademark associates it with or recalls the name of a specific person based on thesound composing the sound trademark, in light of the transaction status, at the time of
the application for trademark registration, it cannot be said that the sound is generally
recognized as one indicating the name of a person. Therefore, it should be said that it
cannot be recognized that the sound trademark falls under the category of a trademark
containing "the name of another person" as set forth in said item.
B. According to the facts found in this case related to the business development of thedrugstore "Matsumotokiyoshi," the registered trademark of the Plaintiff and the use
thereof, TV commercials, etc., it is found, as the transaction status related to theTrademark in the Application, at the time of the application for the Trademark in the
Application (application date: January 30, 2017), that the indication "マツモトキヨシ" (Matsumotokiyoshi) was famous throughout Japan as one indicating the name of thedrugstore "Matsumotokiyoshi," Matsumotokiyoshi Co., Ltd., the Plaintiff, or groupcompanies of the Plaintiff and that a sound identical to or similar to the Trademark in
the Application containing the linguistic element of " マ ツ モ ト キ ヨ シ "(Matsumotokiyoshi) was widely known as an advertisement (a phrase in a commercialsong) of the drugstore "Matsumotokiyoshi," as a result of being used in TV commercials
and in each retail store of the drugstore "Matsumotokiyoshi."Under the aforementioned transaction status, at the time of the application forregistration of the Trademark in the Application (application date: January 30, 2017), it
was usually the name of the drugstore "Matsumotokiyoshi" and the company name of
Matsumotokiyoshi Co., Ltd., the Plaintiff, or group companies of the Plaintiff that aperson who came across the Trademark in the Application associated it with or recalledfrom the sound containing the linguistic element of " マ ツ モ ト キ ヨ シ "(Matsumotokiyoshi) in the composition of the Trademark in the Application. Ordinarily,iii

it cannot be found that the sound was associated with or reminded of the name "松本清," "松本潔," "松本清司," etc. that can be read as "matsumoto kiyoshi." Therefore, itcannot be said that the sound was recognized as one generally indicating the name of aperson. Consequently, it should be said that the Trademark in the Application cannot befound to fall under a trademark containing "the name of another person" as set forth in
Article 4, paragraph (1), item (viii) of the Trademark Act.

iv

Judgment rendered on August 30, 2021
2020 (Gyo-Ke) 10126, Case of seeking rescission of the JPO decision
Date of conclusion of oral argument: August 16, 2021
Judgment
Plaintiff: Matsumotokiyoshi Holdings, Co., Ltd.

Defendant: Commissioner of the Japan Patent Office

Main text
1. The decision made by the Japan Patent Office (JPO) on September 9, 2020,
concerning the case of Appeal against Examiner's Decision of Refusal No. 2018 -8451
shall be 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) On January 30, 2017, concerning a trademark consisting of a sound as stated in 1.
of the Attachment (hereinafter referred to as the "Trademark in the Application"), thePlaintiff filed an application for trademark registration (Trademark Application No.
2017-007811; hereinafter referred to as the "Application") for the services stated in theapplication belonging to Class 35 and Class 44 as designated services (Exhibit Ko 20).
The Plaintiff received a notice of grounds for refusal dated September 20, 2017,(Exhibit Otsu 1) and then made an amendment dated December 1, 2017, to amend thedesignated services in the Application to the services stated in 2. of the Attachment(Exhibit Ko 21).
(2) The Application was refused dated March 16, 2018, (Exhibit Ko 22), and therefore,
the Plaintiff filed an appeal against the examiner's decision of refusal on June 20, 2018
(Exhibit Otsu 3).
The JPO examined the appeal as a case of Appeal against Examiner's Decision of
Refusal No. 2018-8451 and made the decision that "the examiner's decision of refusal1

is maintained" (hereinafter referred to as the "JPO Decision") on September 9, 2020. A
certified copy of the decision was delivered to the Plaintiff on the 29th of the samemonth.
(3) The Plaintiff filed this lawsuit to seek rescission of the JPO Decision on October 28,
2020.
2. Summary of the grounds for the JPO Decision
Grounds for the JPO Decision are as stated in the Attachment: Decision Form (copy).
The summary of the grounds are as follows: [i] As stated in 1. of the Attachment,
the Trademark in the Application is a sound trademark ("a trademark consisting of asound"; the same applies hereinafter) consisting of a musical element and a linguistic
element "マツモトキヨシ" (Matsumotokiyoshi) and, based on the fact that a numberof persons' names composed of the last name pronounced as "matsumoto" and the firstname pronounced as "kiyoshi" are posted on websites and included in "Hello Pages,"
phone books issued by NTT East and West Japan, the linguistic element of "マツモトキ ヨ シ " (Matsumotokiyoshi) that composes the Trademark in the Application is
objectively identified as the name of a person pronounced as "matsumoto kiyoshi."
Therefore, the Trademark in the Application is a trademark containing "the name" ofanother person. [ii] Persons with the name pronounced as "matsumoto kiyoshi" asindicated on the aforementioned websites and "Hello Pages" are found to be different
from the Plaintiff (demandant); however, it is not found that the Plaintiff obtained
approval from those persons. [iii] Consequently, the Trademark in the Application is atrademark containing "the name of another person" and it is not found that approval
from the persons concerned have been obtained, and therefore, it falls under the caseset forth in Article 4, paragraph (1), item (viii) of the Trademark Act and cannot beregistered. [iv] Even if the Trademark in the Application is famous to an extent as thename indicating the abbreviation of the business name of the Plaintiff or its subsidiarycompanies and the name of drugstores, supermarkets, and do-it-yourself stores carriedout by the subsidiary companies, that fact does not have an impact on determining
whether the Trademark in the Application falls under the provisions of said item.
3. Grounds for rescission
Error in the determination of whether the Trademark in the Application falls under
Article 4, paragraph (1), item (viii) of the Trademark Act(omitted)
No. 4 Judgment of this Court
2

1. The Trademark in the Application(1) A sound trademark is a trademark that is recognized by people's sense of hearing(main sentence of Article 2, Paragraph (1) of the Trademark Act). In cases of obtaining
a trademark registration for a sound trademark, that fact must be indicated in theapplication form (Article 5, paragraph (2), item (iv) of the Trademark Act), informationnecessary for identifying the sound for which trademark registration is sought by using
letters or staff notation or their combination must be indicated in the "Trademark forwhich registration is sought" column in the application form (Article 4 -5 of theRegulations for Enforcement of the Trademark Act), and materials that are specified by
the Order of the Ministry of Economy, Trade and Industry ("sound file") must be
attached (Article 5, paragraphs (4) and (5) of the Trademark Act; Article 4-8, paragraph(1), item (v), paragraph (2), item (v), and paragraph (3) of the Regulations for
Enforcement of the Trademark Act).
In cases of indicating a trademark in a staff notation, the sound for which trademark
registration is sought is to be identified by stating music notes, clefs, time signatures,and tempos or a linguistic element (if lyrics, etc. are included) and rest symbols asnecessary in the "Trademark for which registration is sought" column (reference: 55.02 1 of the Trademark Examination Manual).
(2) The Trademark in the Application is a sound trademark consisting of a musicalelement stated in a staff notation and the linguistic element of lyrics of "マツモトキヨシ" (Matsumotokiyoshi) indicated in katakana as stated in 1. of the Attachment. The
sound consisting of a linguistic element in the composition of the Trademark in the
Application is pronounced as "matsumotokiyoshi."In addition, the sound that emits the linguistic element of " マ ツ モ ト キ ヨ シ "(Matsumotokiyoshi) in a male voice with a musical element, such as a rhythm, melody,etc., is recorded in the Sound File (Exhibit Ko 40) attached to the application form of
the Application.
2. Facts found in this caseAccording to the evidence (Exhibits Ko 1 through 3, 5, 6, 9 through 19, 27 through29, and 40 through 51, and Exhibit Otsu 2) and the entire import of oral arguments, thefollowing facts are found.
(1) Business development, etc. of the drugstore "Matsumotokiyoshi"
A. In December 1932, A opened the pharmacy named "Matsumoto Pharmacy" in
Matsudo City, Chiba. In April 1951, A changed the name of the pharmacy from
"Matsumoto Pharmacy" to "Pharmacy Matsumotokiyoshi."
In January 1954, the aforementioned privately-run pharmacy was reorganized as a3

private limited company and Drugstore Matsumotokiyoshi Incorporated wasestablished.
In April 1975, Drugstore Matsumotokiyoshi Incorporated was reorganized as astock company, Matsumotokiyoshi Co., Ltd.
B. In 1987, Matsumotokiyoshi Co., Ltd. changed its business form from a pharmacy toa "drugstore" with a wide range of products, including cosmetics, everyday sundries,
etc., and started the expansion of stores of the drugstore "Matsumotokiyoshi"
throughout Japan.
Furthermore, Matsumotokiyoshi Co., Ltd. expanded its business form to start
operating suburban-type drugstores by opening the first store of that type in Kashiwa
City, Chiba, in 1994. Sales of the drugstore "Matsumotokiyoshi" marked 101.778
billion yen in the fiscal year that ended in March 1995 (the first place in the drugstores)
and the number of stores reached 216.
C. The Plaintiff was established on October 1, 2007, with the aim of supervising andmanaging the business activities of companies, etc. engaging in the businesses of
Matsumotokiyoshi Co., Ltd. etc. by holding their shares.
Since January 2008, the Plaintiff has succeeded to the business of managing
subsidiary companies of Matsumotokiyoshi Co., Ltd., which is the Plaintiff's subsidiarycompany, through a company split, and has merged with other companies by absorption.
As of March 31, 2017, the Plaintiff has formed a corporate group (group companies of
the Plaintiff) consisting of 14 consolidated subsidiary companies and one affiliatedcompany (Exhibit Ko 1) and, subsequently, as of March 31, 2020, the number of thePlaintiff's group companies reached 17 in total (Exhibit Ko 27).
The number of stores of the drugstore "Matsumotokiyoshi" that the Plaintiff or
Matsumotokiyoshi Co., Ltd. operated was 1,555 in 45 prefectures in Japan as of March
31, 2017 (Exhibit Ko 3), and it increased to 1,726 in 47 prefectures in Japan as of June30, 2020 (Exhibit Ko 45). In addition, the number of members who have a member's
card (point card) of the Plaintiff's group companies reached approximately 24.4 million
as of March 31, 2017 (Exhibit Ko 3), and it increased to approximately 29.0 million asof March 31, 2020 (Exhibit Ko 45).
D. According to "Best Japan Brands," which is a Japanese brand appraisal ranking by
thebranding

company Interbrand(Exhibits

Ko

5,

and

46

through

51),"Matsumotokiyoshi" ranked as the number one "brand" as a drugstore in Japan fromfiscal year 2016 through fiscal year 2021.
(2) Registered trademark of the Plaintiff and its use, etc.
The Plaintiff or Matsumotokiyoshi Co., Ltd. filed 35 trademark registrations4

concerning a trademark of " マ ツ モ ト キ ヨ シ " (Matsumotokiyoshi) in katakana, a
trademark of "MatsumotoKiyoshi" in alphabet, and trademarks including thesecharacters in their composition for the period from 1989 through 2013 and all of themwere registered (Exhibits Ko 6, and 9 through 19).
These registered trademarks have been used continuously on signs and in stores ofthe drugstore "Matsumotokiyoshi," on the Plaintiff's website, online store, etc. (Exhibits
Ko 3, 27 through 29, and 45, and Exhibit Otsu 2).
(3) TV commercial status, etc.
Matsumotokiyoshi, Co., Ltd. began TV commercials for the drugstore"Matsumotokiyoshi" in 1996.
In each TV commercial, the characters of "マツモトキヨシ" (Matsumotokiyoshi)(logo of "マツモトキヨシ" in the form of registered trademark in Exhibits Ko 9 and
15) are written with the characters of "ドラッグストア" (drugstore) and the openingof new stores, goods sold at low prices, and other information were advertised.
In addition, in each TV commercial, in principle, a skit was performed by one or
multiple actors that reminds us of the drugstore "Matsumotokiyoshi," and commercial
songs with lyrics that contain sounds that are the same as or similar to the Trademark
in the Application were played.
For example, in the TV commercials titled "Pretty woman" recorded on September
17, 1997, and "No life no Matsukiyo, student version" and "adult version" recorded on
March 23, 1998, a sound that is the same as or similar to the Trademark in the
Application was played in a female voice. In addition, in the TV commercials titled "I
go to Matsukiyo, male version" and "I go to Matsukiyo, female version" recorded on
September 14 1998, and "Material Mami-chan" recorded on March 5, 1999, and"Matured Emi-chan" recorded on September 17, 1999, a sound that is the same as orsimilar to the Trademark in the Application was played in a male voice.
In the TV commercial titled "A couple" recorded on March 15, 2000, the openingof an Osaka Station store as a new store of the drugstore "Matsumotokiyoshi" wasannounced through a skit, and a sound that is the same as or similar to the Trademark
in the Application was played in a female voice. The same sound was also played in the
TV commercials titled "Opening" (Fukuoka Tenjin) recorded on July 19, 2001. In
addition, in TV commercials titled "Fateful opening" (Hamamatsu) recorded on
November 9, 2002, "Announcement of an opening" (Shinsaibashi store) and"Announcement of an opening sale" (Shinsaibashi store) recorded on November 23,
2002, "The youth" (Kitakyushu) recorded on April 11, 2003, and "Happy opening"(Fukuyama) recorded on April 12, 2003, a sound that is the same as or similar to the5Trademark in the Application was played in a male voice. In the TV commercial titled"A deer, father, and daughter" recorded on April 18, 2003, a sound that is the same asor similar to the Trademark in the Application was played in a chorus of multiple voices.
In the TV commercial titled "Speech and shopping" recorded on May 29, 2005, asound that is the same as or similar to the Trademark in the Application was played ina female voice. In the TV commercial titled "Cold medicine series, Nagoriyuki "recorded on December 15, 2007, a sound that is the same as or similar to the Trademark
in the Application was played in a female voice along with the display of the logo of "マツモトキヨシ" after an advertisement for a cold medicine with an image of a woman
playing the guitar and singing in the background.
After these TV commercials were broadcast, a sound that is the same as or similar
to the Trademark in the Application was played and used in retail stores of the drugstore"Matsumotokiyoshi."
3. Whether the Trademark in the Application falls under Article 4, paragraph (1), item
(viii) of the Trademark Act
The Plaintiff alleged as follows: [i] At the time of filing an application for the
Trademark in the Application, the sound consisting of the linguistic element,"Matsumotokiyoshi," in the composition of the Trademark in the Application usuallyand easily suggests and reminds of "Matsumotokiyoshi" as the name of a drugstore or
Matsumotokiyoshi Co., Ltd. and Matsumotokiyoshi Holdings, Co., Ltd. (the Plainti ff)
as a company name, but not the name of a person pronounced as "matsumotokiyoshi,"and therefore, the sound consisting of the linguistic element of " マツモトキヨシ"(Matsumotokiyoshi) that composes the Trademark in the Application is not identified
objectively as the name of a person pronounced as "matsumoto kiyoshi"; and [ii]therefore, the Trademark in the Application cannot be said to be a trademark containing"the name of another person" and the determination of the JPO Decision to the effect
the Trademark in the Application falls under Article 8, paragraph (1), item (viii) of theTrademark Act is incorrect. Therefore, this court makes the following judgment.
(1) Article 4, paragraph (1), item (viii) of the Trademark Act stipulates that a trademark
containing the portrait of another person, or the name of another person, or well-known
abbreviation thereof, etc. may not be registered except for those for which theregistration has been approved by the person concerned. The purport of this item isconstrued to protect the moral interest that a person's name, etc. shall not be used in a
trademark without the approval of the person concerned (see 2003 (Gyo -Hi) 265, thejudgment of the Third Petty Bench of the Supreme Court of June 8, 2004, Saibanshu
Minji No.214, at 373; 2004 (Gyo-Hi) 343, the judgment of the Second Petty Bench of6the Supreme Court of July 22, 2005, Saibanshu Minji No. 217, at 595).
In light of the purport of said item, if the sound composing a sound trademark is
generally recognized as indicating the name of a person, the sound trademark is
construed as a trademark containing "the name of another person" and cannot beregistered pursuant to said item except for a sound for which the registration has been
approved by the person concerned.
In addition, said item is a provision with the intention of balancing the interest of
an applicant to receive a trademark registration and the moral interest related to thename, etc. of another person. Even if there is a person whose name is pronounced in thesame way as the sound that composes a sound trademark, it cannot be construed thatthe provision stipulates to always prioritize the moral interest related to the name ofanother person even in cases where the sound is not generally recognized as one thatindicates the name of a person.
Based on the above, even if there is a person with a name identical to the soundcomposing a sound trademark, if it cannot be found that a person who comes across thesound trademark associates it with or recalls the name of a specific person based on thesound composing the sound trademark, in light of the transaction status, at the time of
the application for trademark registration, it cannot be said that the sound is generally
recognized as one indicating the name of a person. Therefore, it should be said that it
cannot be recognized that the sound trademark falls under the category of a trademark
containing "the name of another person" set forth in said item.
(2) A. Considering the above from the perspective of the Trademark in the Application,according to the facts found in this case as stated in 2. above, [i] for over approximately
30 years after Matsumotokiyoshi Co., Ltd. began expansion of stores of the drugstore"Matsumotokiyoshi" in 1987 and until the Application was filed on January 30, 2017,
Matsumotokiyoshi Co., Ltd., the Plaintiff, and group companies of the Plaintiff havecontinuously used the indication "マツモトキヨシ" (Matsumotokiyoshi) as the nameof the drugstore or their company name; [ii] as of March 31, 2017, the number of storesof the drugstore "Matsumotokiyoshi" was 1,555 in 45 prefectures in Japan, the numberof members who have a member's card (point card) of the Plaintiff's group companies
reached approximately 24.4 million, and the brand of "Matsumotokiyoshi" wasevaluated as the number one brand in Japan as a drugstore in the brand appraisal ranking
in fiscal years 2016 and 2017 by Interbrand; [iii] it is found that, in the TV commercialsof the drugstore "Matsumotokiyoshi" that was began in 1996, a considerable number ofcommercial songs that contain a sound that is the same as or similar to the Trademark
in the Application in a female or male voice or in a chorus of multiple voices were used,7

and even after the TV commercial was broadcast, a sound that is the same as or similar
to the Trademark in the Application was used in retail stores of the drugstore"Matsumotokiyoshi."According to the facts found in this case, it is found, as the transaction status related
to the Trademark in the Application, at the time of the application for the Trademark in
the Application (application date: January 30, 2017), that the indication "マツモトキヨシ" (Matsumotokiyoshi) was famous throughout Japan as one indicating the name ofthe stores of the drugstore "Matsumotokiyoshi," Matsumotokiyoshi Co., Ltd., thePlaintiff, or group companies of the Plaintiff and that a sound identical to or similar to
the Trademark in the Application containing the linguistic element of "マツモトキヨ
シ " (Matsumotokiyoshi) was widely known as an advertisement (a phrase in acommercial song) of the drugstore "Matsumotokiyoshi," as a result of being used in TV
commercials and in each retail store of the drugstore "Matsumotokiyoshi."B. Under the aforementioned transaction status as stated in A. above, at the time of theapplication for registration of the Trademark in the Application (application date:
January 30, 2017), it was usually the name of the drugstore "Matsumotokiyoshi" andthe company name of Matsumotokiyoshi Co., Ltd., the Plaintiff, or group companies of
the Plaintiff that a person who came across the Trademark in the Application associatedit with or recalled from the sound containing the linguistic element of "マツモトキヨ
シ " (Matsumotokiyoshi) in the composition of the Trademark in the Application.
Ordinarily, it cannot be found that the sound was associated with or reminded of thename "松本清," "松本潔," "松本清司," etc. that can be read as "Matsumoto Kiyoshi."
Therefore, it cannot be said that the sound was recognized as one generally indicating
the name of a person.
Consequently, it should be said that the Trademark in the Application cannot befound to fall under a trademark containing "the name of another person" as set forth in
Article 4, paragraph (1), item (viii) of the Trademark Act.
(3) A. On the other hand, the Defendant made the following allegations: [i] "マツモトキヨシ" (Matsumotokiyoshi) in katakana is indicated as one of the indications of thename of a person different from the Plaintiff, such as "松本清," "松本潔," and "松本清司," etc., and these persons are presumed to exist; the name of a person different
from the Plaintiff, such as "松本清," "松本潔," etc., is indicated as the name of a person
pronounced as "matsumoto kiyoshi" in the Hello Page of each region (Exhibits Otsu 8
through 19) and all of these persons are presumed to be persons who have existed since
the time of the application for registration of the Trademark in the Application until
today; and according to the fact that indicating the name in katakana is implemented by8society in general in various kinds of commercial transactions (Exhibits Otsu 20
through 28), the sound consisting of the linguistic element of " マ ツ モ ト キ ヨ シ "(Matsumotokiyoshi) in the composition of the Trademark in the Application easily
suggests and reminds of the name of a person pronounced as "matsumoto kiyoshi," suchas "松本清," "松本潔," and "松本清司," etc., and it is objectively identified as thename of a person read as "matsumoto kiyoshi"; and [ii] based on the evidence related
to the TV commercials submitted by the Plaintiff, the coverage of the TV commercials
is not clear, and broadcasting in 2007 and after cannot be confirmed, the impact of the
TV commercials on the recognition of a person who heard the sound of the Trademark
in the Application is limited; since it can be said that a person who viewed the TVcommercials could hear, identify, and memorize the sound consisting of the linguistic
element of "マツモトキヨシ" (Matsumotokiyoshi) as well as the visual element, theTV commercials cannot serve as evidence to prove that a person who comes across theTrademark in the Application recognizes the sound consisting of the linguistic elementof " マ ツ モ ト キ ヨ シ " (Matsumotokiyoshi) only as the name of the store or thecompany without recognizing it as the name of a person whose last name is Matsumotoand first name is Kiyoshi; it is difficult to say that the brand appraisal ranking indicatedby the Plaintiff directly reflects the recognition of persons who heard the sound of theTrademark in the Application; and there is no other evidence supporting that the soundconsisting of the linguistic element of " マ ツ モ ト キ ヨ シ " (Matsumotokiyoshi) is
recognized only as the name of the drugstore or the company. Based on these allegations,the Defendant alleged that, as indicated in [i] above, it cannot be denied that the soundconsisting of the linguistic element is objectively identified as the name of a person
read as "matsumoto kiyoshi," such as "松本清," "松本潔," and "松本清司," etc., andtherefore, the Trademark in the Application falls under a trademark containing "thename of another person" as set forth in Article 4, paragraph (1), item (viii) of theTrademark Act.
However, as found in (2) A. above, in consideration of the transaction status that at
the time of filing an application for the Trademark in the Applicati on, the indication of" マ ツ モ ト キ ヨ シ " (Matsumotokiyoshi) was famous throughout Japan as one
indicating the name of the drugstore "Matsumotokiyoshi," Matsumotokiyoshi Co., Ltd.,the Plaintiff, or group companies of the Plaintiff and that a sound that is the same as orsimilar to the Trademark in the Application containing the linguistic element of " マツモトキヨシ" (Matsumotokiyoshi) was widely known as an advertisement (a phrase in
a commercial song) of the drugstore "Matsumotokiyoshi" as a result of being used in
TV commercials and in each retail store of the drugstore "Matsumotokiyoshi," a person
9who comes across the Trademark in the Application usually and easily associates it withor is reminded of "Matsumotokiyoshi" as the name of a drugstore andMatsumotokiyoshi, Co., Ltd. or the Plaintiff's group companies as a company namefrom the sound consisting of the linguistic element of " マ ツ モ ト キ ヨ シ "(Matsumotokiyoshi) in the composition of the Trademark in the Application, but it is
not found that the person usually associates it with or is reminded of the name of aperson read as "matsumoto kiyoshi," such as "松本清," "松本潔," and "松本清司," etc.
In addition, according to Exhibit Ko 43, it is found that the TV commercials were
aired throughout Japan mainly in the capital area, where retail stores of the drugstore"Matsumotokiyoshi" are located, and it is also found that, even after broadcasting the
TV commercials, the sound that was used in the TV commercials and that is the sameas or similar to the Trademark in the Application is used in retail stores of the drugstore"Matsumotokiyoshi." Therefore, it cannot be said that the impact of the TV commercials
on the recognition of a person who heard the Trademark in the Application is limited,
and the fact that the TV commercials have the visual element does not have any impact
on this finding.
In addition, as explained in (1) above, in consideration of the fact that said item isa provision with the intention of balancing the interest of an applicant to receive a
trademark registration and the moral interest related to the name, etc. of another person
and that it cannot be construed that the provision stipulates to always prioritize themoral interest related to the name of another person even in cases where the sound is
not generally recognized as one that indicates the name of a person, it is inappropriate
for the Defendant to consider that the Trademark in the Application falls under the
trademark containing "the name of another person" as set forth in said item as long asa person who comes across the Trademark in the Application does not necessarily
recognize the sound consisting of the linguistic element of " マ ツ モ ト キ ヨ シ "(Matsumotokiyoshi) only as the name of the drugstore or the company.
Consequently, the aforementioned allegation of the Defendant cannot be adopted.
B. Next, the Defendant alleged that as long as a sound consisting of the linguistic
element of " マ ツ モ ト キ ヨ シ " (Matsumotokiyoshi) in the composition of theTrademark in the Application is objectively identified as the name of a person read as"matsumoto kiyoshi," such as "松本清," "松本潔," and "松本清司 ," etc., and theTrademark in the Application is a trademark containing "the name of another person,"in light of the purport of Article 4, paragraph (1), item (viii) of the Trademark Act, thefacts that the sound consisting of the linguistic element is known to an extent as one
that indicates the drugstore operated by the Plaintiff or Matsumotokiyoshi Co., Ltd. and10

that the sound is known as an abbreviation of a specific person to an extent do not havean impact on whether the Trademark in the Application falls under said item.
However, as explained in A. above, it cannot be said that the Trademark in the
Application is a trademark containing "the name of another person" and therefore, t heallegation of the Defendant lacks the assumption and cannot be adopted.
(4) Summary
Consequently, since there was an error in the determination of the JPO Decision inthat it determined that the Trademark in the Application falls under Article 4, paragraph(1), item (viii) of the Trademark Act, there are grounds for the rescission alleged by the
Plaintiff.
4. Conclusion
As mentioned above, there are grounds for the rescission alleged by the Plaintiff
and therefore, the JPO Decision should be rescinded.
Consequently, the judgment shall be rendered as indicated in the main text.
Intellectual Property High Court, First Division
Presiding judge: OTAKA Ichiro
Judge: KOBAYASHI YasuhikoJudge: OGAWA Takatoshi(Attachment)
1. Trademark for which registration is sought

2. Designated services
Class 35 "Retail services or wholesale services for woven fabrics and beddings;
retail services or wholesale services for clothing; retail services or wholesale services
for footwear, other than special footwear for sports; retail services or wholesale services
for bags and pouches; retail services or wholesale services for personal articles; retailservices or wholesale services for foods and beverages; retail services or wholesale
services for two-wheeled motor vehicles; retail services or wholesale services for11bicycles; retail services or wholesale services for furniture; retail services or wholesale
services for joinery fittings; retail services or wholesale services for tatami mats; retailservices or wholesale services for ritual equipment; retail services or wholesale services
for electrical machinery and apparatuses; retail services or wholesale services forbladed or pointed hand tools, hand tools and metal hardware; retail services orwholesale services for kitchen equipment, cleaning tools and washing utensils; retailservices or wholesale services for pharmaceutical, veterinary, and sanitary preparations
and medical supplies; retail services or wholesale services for cosmetics, toiletries,
dentifrices, soaps, and detergents; retail services or wholesale services for agricultural
machines, implements and supplies; retail services or wholesale services for flowers[natural] and trees; retail services or wholesale services for printed matter; retailservices or wholesale services for paper and stationery; retail services or wholesale
services for sports goods; retail services or wholesale services for toys, dolls, gamemachines and apparatus; retail services or wholesale services for musical instruments
and records; retail services or wholesale services for photographic machines andapparatus and photographic supplies; retail services or wholesale services for clocks,
watches, and spectacles [eyeglasses and goggles]; retail services or wholesale services
for tobaccos and smokers' articles; retail services or wholesale services for building
materials; retail services or wholesale services for chemicals, Canada balsam, copal,
sandarac, shellac, wood turpentine oil, dammar, mordants, mastic, pine gum, woodpreservatives, antistatic preparations for household purposes, de-greasing preparations
for household purposes, rust removing preparations, stain removing benzine, fabricsofteners for laundry use, laundry bleach, solid lubricants, tar, pitch, binding agents forice cream, meat tenderizers for household purposes, and preparations for stiffening
whipped cream; retail services or wholesale services for glue and adhesives forindustrial purposes (excluding those for offices or household purposes), adhesives for
affixing false hair, adhesives for affixing false eyelashes, starch for laundry purposes,
seaweed gelatin for laundry use [Funori], and pastes and other adhesives for stationery
or household purposes; retail services or wholesale services for dyestuffs; retail services
or wholesale services for priming putty, paints, and paint stripping preparations; retailservices or wholesale services for printing ink; retail services or wholesale services forshoe cream, shoe black [shoe polish], and grease for shoes and boots; retail services orwholesale services for shoe polish and leather preserving oil and grease; retail services
or wholesale services for anti-rust greases and mineral oils and greases for industrial
purposes [not for fuel]; retail services or wholesale services for sewing machines; retailservices or wholesale services for adhesive tape dispensing machines, automatic12

stamping machines, blueprint apparatus, cash registers, coin counting or sorting
machines, ergograph, photo-copying machines, mathematical instruments, time anddate stamping machines, time clocks [time recording devices], punched card officemachines, voting machines, postage stamp checking apparatus, addressing machines,
ink ribbons, automatic stamp affixing machines, electric staplers for offices, envelope
sealing machines for offices, stamp obliterating machines, drawing instruments,
typewriters, checkwriters, mimeographs, relief duplicators, paper shredders for officeuse, franking machines, and rotary duplicators; retail services or wholesale services for
power sprayers for disinfecting, insecticides, and deodorants [not for agricultural
purposes]; retail services or wholesale services for fire extinguishers, fireplugs, fire
hose nozzles, sprinkler systems for fire protection, fire hose, and asbestos safetycurtains; retail services or wholesale services for fire alarms, gas alarms, anti -theftwarning apparatus, and anti-theft alarms for vehicles; retail services or wholesale
services for lawnmowers; retail services or wholesale services for balances, tapemeasures, and other measuring or testing machines and instruments; retail services orwholesale services for clinical thermometers, body fat monitors, sphygmotensiometers,
and other medical apparatus and instruments; retail services or wholesale services forrubber thread and covered rubber yarn, not for textile use, chemical fiber yarn andthread, not for textile use, asbestos thread, and threads; retail services or wholesale
services for tapes [haberdashery] and ribbons; retail services or wholesale services forrubber cords and laces, asbestos cords and laces, leather straps, straw plaits, knitted
cords, Sanada-himo [Japanese-style cords], starched cords, twisted cords, cordage, andbraids; retail services or wholesale services for asbestos net, nets (excluding those madeof metals or asbestos), and wire nets and gauzes; retail services or wholesale services
for irons [non-electric hand tools], needle-threaders, dressmakers' chalk sharpeners,
paper patterns, tailors' chalk, embroidery frames and hoops, ironing boards, tailors'
sprayers, ironing boards [Kotedai], Hera-dai [fabric marking boards], knitting sticks,
sewing boxes, dressmakers' impressing blades, sewing thimbles, pin and needle
cushions, and boxes for needles; retail services or wholesale services for bath fittings,
yukakibo [Japanese bath utensils for hot bathtub water], bathroom stools, bathroom
pails, shower curtains, and bath mats for wash places; retail services or wholesale
services for metal nameplates and door nameplates, and nameplates and door
nameplates, not of metal; retail services or wholesale services for banners of paper,
flags of paper, flagpoles, and banners and flags, not of paper; retail services orwholesale services for candles; retail services or wholesale services for candle
extinguishers and candlesticks; retail services or wholesale services for warming pans,
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pocket warmers, pocket warmers ash, and hot water bottles for warming one's feet in
bed; retail services or wholesale services for fly catching paper and fly swatters; retailservices or wholesale services for mouse and rat traps; retail services or wholesale
services for stakes for plants or trees, flower pots, hydroponic plant pots for homegardening, and watering cans; retail services or wholesale services for dog leash,
clothing for domestic pets, beds for household pets, dog kennels, nesting boxes forsmall birds, feeding vessels for pets, brushes for pets, chewing toys for pet dogs, tanks[indoor aquaria] and their fittings, bird cages, bird baths, and toys for domestic pets;
retail services or wholesale services for step ladders and ladders; retail services orwholesale services for letter boxes of metal, letter boxes of masonry, and letter boxes[not of metal or masonry]; retail services or wholesale services for clothes brushes;retail services or wholesale services for hygienic hand towels of paper, towels of paper,
table napkins of paper, hand towels of paper, and handkerchiefs of paper; retail services
or wholesale services for urinals for medical purposes, bed pans, toilet stool units witha washing water squirter, disinfectant dispensers for toilets, toilet bowls, seats for use
with Japanese style toilet bowls, chamber pots, toilet paper holders, and toilet seatcovers of textile; retail services or wholesale services for shopping baskets for thetransport of items; retail services or wholesale services for piggy banks and piggy banks(not of metal); retail services or wholesale services for shipping tags; retail services orwholesale services for garbage incinerators for household purposes; retail services orwholesale services for water tanks of metal for household purposes, water tanks ofmasonry for household purposes, and water tanks for household purposes, not of metal
or masonry; retail services or wholesale services for heating or cooling packs filled withchemical substances ready to react when required; retail services or wholesale services
for hanging boards [Japanese style pegboards using positional hooks]; retail services orwholesale services for tool boxes of metal, empty and tool boxes, not of metal; retailservices or wholesale services for towel dispensers of metal, insecticide atomizers[hand tools], towel dispensers, not of metal, boxes of metal for dispensing paper towels,boot jacks, and soap dispensers; retail services or wholesale services for tablecloths ofpaper, indoor window blinds [shade] [furniture], blinds of reed, rattan or bamboo[Sudare], bead curtains for decoration, window shades, seat covers of textile, wall
hangings of textile, curtains, table cloths, not of paper, draperies [thick drop curtains],
floor coverings, and wall hangings; retail services or wholesale services for flower
vases, flower bowls, and wind chimes; retail services or wholesale services for p lastic
films for agricultural purposes, tarpaulins, not for ships, tents, not for camping, window
shades, and reed screen; retail services or wholesale services for benches; retail services
14

or wholesale services for man-made garden ponds; retail services or wholesale services
for artificial turf; retail services or wholesale services for artificial flowers; retailservices or wholesale services for insect collectors' tools; retail services or wholesale
services for paintings and calligraphic works and picture frames; retail services orwholesale services for image-recorded magnetic tapes, magnetic discs, photographs[printed], and photograph stands; and retail services or wholesale services for matches"Class 44 "providing medical information; preparation and dispensing of
medications; dietary and nutritional guidance; nursing care; rental of medical apparatus
and instruments; counseling and provision of information related to aesthetics andbeauty; beauty salon services mainly in the nail arts, nail care, and nail massages;
beauty salon services in nail salons; provision of information related to nail salons;
beauty salon services; and rental of aesthetic equipment."

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