Copyright Date
Case number

December 23, 2020
2020 (Gyo-Ke) 10050

Court

Intellectual
Property
High Court, Fourth
Division- A case in which, concerning the use by Defendant, who has the trademark right for a
trademark consisting of the characters, "農口", written in standard characters, of the
trademarks consisting of the characters, "農口", written vertically in cursive style orin block style, for the designated goods of "Japanese sake [Nihonshu]", the court heldthat since the above use cannot be considered misleading as to the quality of thegoods or causing confusion with the goods pertaining to the business of Plaintiff, itcannot be acknowledged that the above use falls under Article 51, paragraph (1) of theTrademark Act.
Case type: Rescission of Trial Decision to Maintain (Trademark)
Result: Dismissed
References: Article 51, paragraph (1) of the Trademark Act
Related rights, etc.: Trademark Registration No. 5707382
Decision of JPO: Rescission Trial No. 2018-300815
Summary of the Judgment
1.

Defendant, who is the holder of trademark right for Trademark Registration No.
5707382 (designated goods of "Japanese sake [Nihonshu]; Western liquors ingeneral; Alcoholic fruit beverages; Japanese Shochu-based beverages [Chuhai];
Chinese liquors; Flavored liquors" in Class 33), which consists of the characters, "農 口 ", written in standard characters, uses the trademarks consisting of thecharacters, "農口", written vertically in cursive style or in block style (hereinafter
the one written in cursive style shall be referred to as "Used Trademark 1", and theone written in block style shall be referred to as "Used Trademark 2") for thedesignated goods of "Japanese sake [Nihonshu]".

Regarding such use, Plaintiff

asserted that the use is misleading as to the quality of the goods or that the use
caused confusion with the goods pertaining to the business of Plaintiff, andrequested for a trial for cancellation of trademark registration pursuant to Article
51, paragraph (1) of the Trademark Act.

However, the JPO rendered a decision

to the effect that the request for a trial is dismissed.

The present case is a lawsuit

seeking rescission of the JPO decision.
2.

In the judgment of the present case, the court held that Cited Trademark,which consists of the characters, "農口尚彦研究所", written vertically in blockstyle, is affixed to the nihonshu sold by Noguchi Naohiko Sake Institute Inc.
iwhere Plaintiff serves as toji [chief sake brewer], and held as follows, namely; [i]that there is no sufficient evidence to acknowledge the sales records for the
nihonshu with affixed Cited Trademark, [ii] that "農口尚彦研究所" is introduced
in magazines, newspapers, and websites and the like as the sake brewery where
Plaintiff serves as toji, and there are no indications, except for one case, thatclearly indicate that the name, "農口尚彦研究所", is used as a brand name fornihonshu, and [iii] that while it can be said that Plaintiff's name, "X", had strong
name recognition among nihonshu enthusiasts who are highly interested in brandnames and the like of nihonshu, it cannot be acknowledged that the name was
widely known among general customers.

As such, the court denied the argumentthat Cited Trademark was well known at the time of the JPO decision as anindicator for the goods of "Japanese sake [Nihonshu]" pertaining to the business of
Plaintiff.

Furthermore, in the judgment of the present case, the court held that,given the situation of the above [iii], it cannot be said that the Used Trademarks 1
and 2 generate the concept of "Toji and master in the art, X", and that it also
cannot be acknowledged that the principal part of the Cited Trademark is "農口"or "農口尚彦".

Accordingly, the court held that it cannot be acknowledged that

Used Trademarks 1 and 2 are similar to Cited Trademark, and also held that it
cannot be acknowledged that Defendant's use caused confusion with the goods
pertaining to the business of Plaintiff.
Next, in the judgment of the present case, the court held that since Used
Trademarks 1 and 2 do not generate any specific concept or the concept about
Plaintiff, it cannot be acknowledged that Defendant's use is misleading as tosuggest that the nihonshu with affixed Used Trademarks 1 and 2 are nihonshu
produced by Plaintiff as toji.
3.

Based on the above, in the judgment of the present case, the court held that it
cannot be acknowledged that Defendant's use of Used Trademarks 1 and 2 fall sunder Article 51, paragraph (1) of the Trademark Act, and the court dismissed
Plaintiff's claim.

ii

Judgment rendered on December 23, 2020
2020 (Gyo-Ke) 10050

A case of seeking rescission of the JPO decision

Date of conclusion of oral argument: October 14, 2020
Judgment

Plaintiff: X

Defendant: Noguchi Shuzo Co., Ltd.

Main text
1. Plaintiff's claim shall be dismissed.
2. Plaintiff shall bear the court costs.
Facts and reasons
No. 1

Claim

The decision made by JPO on March 27, 2020 for Rescission Trial No. 2018300815 shall be rescinded.
No. 2

Outline of the case

1. Histories, etc. of procedures at the JPO(1)Defendant is the trademark right holder for the following trademark(Trademark Registration No. 5707382; hereinafter referred to as "Trademark")(Exhibits Ko 99, Ko 100).
Trademark: 農口 (standard characters)
Filing date of the trademark application: May 23, 2014
Date of decision for registration: September 5, 2014
Date of registration: October 3, 2014
Designated goods: "Japanese sake [Nihonshu]; Western liquors in general;
Alcoholic fruit beverages; Japanese Shochu-based beverages [Chuhai];
Chinese liquors; Flavored liquors" in Class 33(2)

On October 26, 2018, Plaintiff requested for a trial for cancellation of1

trademark registration for Trademark pursuant to Article 51, paragraph (1) of
the Trademark Act.
JPO tried the case as Rescission Trial No. 2018-300815, and on March 27,
2020, rendered a decision to the effect that the "request for the trial of thepresent case is dismissed" (hereinafter referred to as "JPO Decision"), and acertified copy of the decision was delivered to Plaintiff on April 4 of the same
year.
(3)

On April 22, 2020, Plaintiff filed the lawsuit of the present case seeking
rescission of the JPO Decision.

2. Summary of the reasons for JPO Decision
The reasons for the JPO Decision are as described in the attached Decision by
JPO (copy).
In sum, [i] Trademark consists of the characters, "農口", written in standard
characters, and it is acknowledged that the Trademark is similar in appearance tothe trademarks which are used by Defendant and which consist of the characters, "農口", written vertically in cursive style or in block style as shown in Attachment
1 as Example of Use 1 and Example of Use 2 (Exhibits Ko 5 to Ko 7; hereinafter,from among these examples, the one written in cursive style as shown in Example
of Use 1 may be referred to as "Used Trademark 1" and the one written in blockstyle as shown in Example of Use 2 may be referred to as "Used Trademark 2"),and the Trademark and Defendant's trademarks also have the same pronunciationof "nouguchi" or "noguchi", so that it is acknowledged that these trademarks are
similar trademarks although it may not be possible to compare them in terms ofconcept, and [ii] Cited Trademark (Exhibits Ko 8, Ko 9) consists of the characters,"農口尚彦研究所", written vertically in block style, and there is no likelihoodthat Trademark would be mistaken for Cited Trademark in terms of appearance or
pronunciation and, so that the two trademarks are not similar trademarks, and it
cannot be said that the level of similarity is high, and furthermore, Plaintiff(Appellant) asserts that Cited Trademark is famous based only on the premise that
Plaintiff himself is a famous toji [chief sake brewer], and it cannot be
acknowledged, based on the assertion made by Plaintiff and the evidence
submitted by Plaintiff, that Cited Trademark has become well known as anindicator of source of the goods pertaining to the business of Plaintiff, so that even
if Defendant used Used Trademarks 1 and 2 for the designated goods of theTrademark, there is no risk of customers being misled into believing that such
goods pertain to the business of Plaintiff, and it cannot be said that confusion2

would be caused with the goods pertaining to the business of Plaintiff, and [iii]Used Trademarks 1 and 2 are not similar to Cited Trademark, and there is no
likelihood that Used Trademarks 1 and 2 would be mistaken for Cited Trademark,and since it cannot be said that Defendant's use of Used Trademarks 1 and 2
evokes Cited Trademark, it cannot be said that Defendant's use of Used
Trademarks 1 and 2 is misleading as to the quality, and [iv] since the use of Used
Trademarks 1 and 2 for their designated goods has no risk of causing confusion
with the goods pertaining to the business of Plaintiff, and there are no
circumstances based on which it can be said that Defendant was aware that
confusion would be caused with the goods pertaining to the business of Plaintiff, itcannot be acknowledged that Defendant's use of Used Trademarks 1 and 2 wasbased on intent as stipulated in Article 51, paragraph (1) of the Trademark Act, sothat [v] since it cannot be said that Defendant intentionally used Used Trademarks
1 and 2, which are similar to Trademark, for the designated goods so as to misleadothers as to the quality of the goods, or to cause confusion with the goods
pertaining to the business of Plaintiff, the registration of the Trademark cannot be
rescinded pursuant to the provisions of the same paragraph.
3. Reason for rescission
Incorrect determination on the applicability of Article 51, paragraph (1) of theTrademark Act(omitted)
No. 4

Judgment of this court

1. Incorrect determination on confusion of source(1) Whether or not Cited Trademark is well known
Plaintiff asserts that the nihonshu produced personally by Plaintiff under
the name, "農口尚彦研究所", and the name of "農口尚彦研究所" as the sellerof such nihonshu is widely recognized among customers, and that Cited
Trademark was well known or famous as an indicator of the goods, "Japanesesake [Nihonshu]", pertaining to the business of Plaintiff at the time of the JPO
Decision, so that the JPO Decision which found otherwise by denying thename recognition is incorrect.

Regarding this point, the court finds as

indicated below.
A. Findings
By comprehensively considering the facts and evidence described3

above in No. 2-1 (Exhibits Ko 2, Ko 4 to Ko 24, Ko 31, Ko 33, Ko 34, Ko
38 to Ko 45, Ko 47, Ko 84, Ko 88 to Ko 94, Ko 107 to Ko 109, Ko 112 toKo 123, Ko 129 (where applicable, includes branch numbers)) as well as
the entire import of the oral argument, the following facts are found.
(A)

On December 24, 1932, Plaintiff was born as the third-generation
head of a toji family in Noto-cho, Ishikawa Prefecture.

After working

as a sake brewer and the like in sake breweries in Shizuoka Prefectureand Mie Prefecture, he gained employment with Kikuhime Co., Ltd. in
Ishikawa Prefecture as toji in 1961 and retired from the company in1997 at the mandatory retirement age (Exhibits Ko 11, Ko 12).

In themeantime, Plaintiff received the top award from the National Sake
Appraising and Deliberating Fair for 12 years in a row, and received the
top award for a total of 24 times during his career (Exhibit Ko 12).
Later, from 1998 until 2012, Plaintiff worked at sake breweries in
Ishikawa Prefecture as toji (Exhibits Ko 38, Ko 84, Ko 117).
(B)

Defendant is a corporation whose purposes include production andsale of refined sake.

On October 31, 2013, Defendant changed its

trade name from "Yamamoto Shuzo Honten Kabushiki Kaisha" to"Noguchi Shuzo Co., Ltd." (Exhibit Ko 4).
Meanwhile, Plaintiff gained employment with Defendant, and from
November 2013 until April 2015, Plaintiff engaged in the production ofsake as toji during two seasons (Exhibit Ko 31), and retired from
Defendant in the same month.
Since 2014, Defendant began selling nihonshu under the brandname of "農口" by placing the labels, which are shown in Example ofUse 1 or Example of Use 2 on Attachment 1, on the bottles.
In addition, on May 23 of the same year, Defendant filed an
application for registration of the Trademark, which consists of thecharacters, "農口", written in standard characters.

Then on October 3of the same year, registration was established for Trademark Right.
(C)

After retiring from Defendant, Plaintiff gained employment with
Noguchi Naohiko Sake Institute Inc. in 2017, and began to produce
sake as toji.

On April 23 of the same year, Noguchi Naohiko Sake

Institute Inc. changed its trade name from "Misago Shuzo Kabushiki
Kaisha" to "Kabushiki Kaisha Noguchi Toji Kenkyusho", and then on
June 7 of the same year, changed the trade name again to the current
4

trade name (Exhibit Ko 108).
Since around December of the same year, Noguchi Naohiko Sake
Institute Inc. began selling nihonshu, which was produced with Plaintiff
as toji, under the brand name of "農口尚彦研究所" [which is thecompany name, "Noguchi Naohiko Sake Institute Inc.", written using
kanji characters] (hereinafter referred to as "Nihonshu of NNSII").
On the bottles of Nihonshu of NNSII (Exhibits Ko 8, Ko 9), there isa label placed at the center of the body part of each bottle, indicating afigure of a motif of a hiragana character, "の", and indicating, on theleft side of the figure, the characters, "杜氏 X" ["Toji X" written using
kanji characters], written vertically in a small size, and a seal of theartist, and there is also a label shaped like a strip and placed at the neckpart of each bottle, indicating the above figure, and indicating,underneath the figure, the characters, " 農 口 尚 彦 研 究 所 ", writtenvertically in block style (Exhibits Ko 8, Ko 9; the label shown in thephotograph in Exhibit 2 is one of such examples).
In addition, on March 27 of the same year, Plaintiff filed an
application for registration of a trademark consisting of the characters, "農口尚彦", written in standard characters, with the designated goods of"Sake" in Class 33, and on September 8 of the same year, Plaintiff was
granted the trademark registration (Exhibit Ko 10).
(D)

From October 2017 until April 2020 (the time of JPO Decision),
Plaintiff and " 農 口 尚 彦 研 究 所 " were introduced in magazines,
newspapers, and websites (Exhibits Ko 11, Ko 13 to Ko 24, Ko 88 toKo 94, Ko 112 to Ko 117, Ko 119, Ko 121, Ko 122).

Examples are asshown below.
a.

In an article titled "Project" (Exhibit Ko 121) dated October 13,
2017 in SAKETIMES, a website specializing in nihonshu, under theheading, "Comeback of X Toji, the god of sake brewing!

Now athis ideal sake brewery, passing down his technique, spirit, and wayof life to the next generation", along with a photograph showing
Plaintiff and the sake brewery under construction, there are words
such as the following, "Upon building the new sake brewery,emphasis was placed on putting X Toji's 'technique, spirit, way oflife' into even the details.

The name, '農口尚彦研究所’, was given

because this is not only the place where X Toji will start his search5for fine sake once again, but is also the place where the very personof 'X' will be succeeded."On the other hand, the above article

does not indicate anything to the effect of using "農口尚彦研究所"
as a brand name for the nihonshu which will be produced in the sakebrewery.
b.

In a column titled "Release information" (Exhibit Ko 122) dated
November 17, 2017 on SAKETIMES, a website specializing in
nihonshu, under the scare-heading, "X, the god of sake brewing,comes back", and the heading, "農口尚彦研究所 launches a projectin the crowdfunding service, 'Makuake'!

Your return gift will be

the very first sake to be brewed in the new facilities", along with aphotograph of Plaintiff, there are words such as the following, "To
those of you who support us through Makuake, we will return you agift of the very first sake to be brewed in the newly built sakebrewery" in sizes and types of "Honjozoshu 720 ml", "Yamahai
Junmaishu 720 ml", and "Yamahai Ginjoshu".

On the other hand,

there are no indications to suggest that "農口尚彦研究所" is used asa brand name for nihonshu.
c.

In a corner titled "Living amidst traditional industries!" (Exhibit
Ko 16) in the homepage for a TV program titled "Sunday Theater'Rikuo'", which was broadcasted by TBS around November 2017,
under the heading, "File 8 '農口尚彦研究所'", there are words suchas the following, "Mr. X (age 84), who is called the 'god of sakebrewing’ and is one of the most famous toji, is a key player who
made the foundation for the nihonshu boom in recent years by
popularizing 'Ginjoshu' in the market of nihonshu, which had
remained stagnant since the 1970s", and "In November of this year,
the sake brewery by the name of '農口尚彦研究所', which is full of
Mr. X's visions, will be completed in Kanagaso-machi, Komatsu-shi,Ishikawa Prefecture.

A new nihonshu will be produced fresh fromthe brewery in December 2017".

The above homepage indicatesthe explanation, "At the end of 2017, Mr. X's new challenge will be
realized into a product and delivered fresh from the brewery.
Anyone who takes pride in being a drinker would wish to try a tasteof nihonshu produced by the 'god of sake brewing’", along with aphotograph of "nihonshu".
6

On the other hand, there are noindications to suggest that "農口尚彦研究所" is used as a brandname for nihonshu, and it is difficult to decipher from the posted
photograph of "nihonshu" that the label on the bottle of nihonshu
indicates "農口尚彦研究所".
d.

On the website of "Fujingaho February Issue" (Exhibit Ko 19) asof January 19, 2018 (date of update), under the heading, "Sake of X,
the god of sake brewing, makes a comeback!", an article introducing
Plaintiff's return as toji at a sake brewery called "農口尚彦研究所"
is posted.

The website shows a photograph of Plaintiff sitting

alongside "nihonshu".

On the other hand, there are no indications

to suggest that "農口尚彦研究所" is used as a brand name fornihonshu, and it is difficult to decipher from the posted photographof "nihonshu" that the label on the bottle of nihonshu indicates "農口尚彦研究所".
e.

In a column titled "New Nihonshu Travel" in Shukan Diamondwhich was issued on February 10, 2018 (Exhibit Ko 18), underheadings such as "New challenge by 85-year-old toji!

Passing

down the community and traditional technique to the next
generation through sake brewing" and "農口尚彦研究所", alongwith a photograph of " 農 口 尚 彦 研 究 所

Junmaishu

Gohyakumangoku produced in Komatsu-shi", an article introducing
Plaintiff was posted.

However, there are no indications to suggestthat "農口尚彦研究所" is used as a brand name for nihonshu, and it
is difficult to decipher from the posted photograph of "nihonshu"
that the label on the bottle of nihonshu indicates "農口尚彦研究所".
f.

In a column titled "This month's another cup" in "MONO
Magazine" which was issued on February 10, 2018 (Exhibit Ko 20),
under the heading, "God of Nihonshu, once again in action!", alongwith a photograph of "nihonshu", there are words such as thefollowing, "As for the new product, Honjozoshu was released on
December 26, which is two days after the 85th birthday of Mr. X,
followed by 'Junmaishu' ... 'Yamahai Ginjoshu' to be released in
mid-January of this year, and 'Junmaishu Daiginjoshu' to be released
by mid-March of this year."

Under the photograph of "nihonshu"

which is posted, there are the words, "From left, '農口尚彦研究所
Honjozoshu'

Using Gohyakumangoku, priced at 3,240 yen (1,800
7ml), '農口尚彦研究所

Junmaishu'

Using Gohyakumangoku,

priced at 3,240 yen (1,800 ml), ' 農 口 尚 彦 研 究 所
Junmaishu'

YamahaiUsing Gohyakumangoku, priced at 2,160 yen (720ml) ... ' 農 口 尚 彦 研 究 所

Junmai Daiginjoshu'

Using

Yamadanishiki, priced at 4,320 yen (720 ml), 8,640 yen (1,800 ml)".
On the other hand, there are no indications to suggest that "農口尚彦研究所" is used as a brand name for nihonshu, and it is difficult
to decipher from the posted photograph of "nihonshu" that the labelon the bottle of nihonshu indicates "農口尚彦研究所".
g.

In the evening edition of The Nihon Keizai Shimbun dated April
13, 2018 (Exhibit Ko 17), under the scare-heading, "Sake breweries
of 'The four famous sake brewers of Noto'", and the headings, "農口尚 彦 研 究 所 in Ishikawa" and "Passing down sake brewing toyounger people", an article introducing a sake brewery called "農口尚彦研究所" was posted.

However, there are no indications tosuggest that "農口尚彦研究所" is used as a brand name for the
nihonshu which will be produced in the sake brewery.
h.

In a column titled "These ambitious people" (Exhibit Ko 109) ina magazine titled "Hitotoki June 2018" dated May 20, 2018, under
the title, "X Toji", along with photographs of Plaintiff and nihonshu,
an article introducing Plaintiff was posted.

Underneath the posted

photograph of "nihonshu", there are the words, "Junmai Daiginjoshu.
The new label is also innovative".

On the other hand, there are no

indications to suggest that "農口尚彦研究所" is used as a brandname for nihonshu, and it is difficult to decipher from the posted
photograph of "nihonshu" that the label on the bottle of nihonshu
indicates "農口尚彦研究所".
i.

In a magazine titled "Gekkan Senmonryori" published in May
2018 (Exhibit Ko 22), under the heading, "農口尚彦研究所 is inaction!

Special three-way conversation among key players", alongwith a photograph of "nihonshu", an article showing a three-way
conversation among Plaintiff, a ceramic artist who is designated aliving national treasure, and an art director.

Underneath the posted

photograph of nihonshu, there are the words, "Here is a lineup of thememorable products which are the first to be released.

From left,'Yamahai Ginjo' (1,800 ml, 5,400 yen), 'Yamahai Junmai' (1,800 ml,
8

4,320 yen), 'Honjozo' (1,800 ml, 3,240 yen), 'Junmai' (1,800 ml,
3,240 yen), 'Junmai Daiginjo' (1,800 ml, 8,640 yen)".

On the other

hand, there are no indications to suggest that "農口尚彦研究所" isused as a brand name for nihonshu, and it is difficult to decipherfrom the posted photograph of "nihonshu" that the label on thebottle of nihonshu indicates "農口尚彦研究所".
j.

In a column titled "Personnel development" in "SMBCManagement" published in May 2018 (Exhibit Ko 21), under theheading, "Passionate 'desire to brew sake' and willingness to getalong with others are important", an interview with Plaintiff about
the establishment of Noguchi Naohiko Sake Institute Inc., a sakebrewery bearing Plaintiff's name, and about the background to
taking the position of toji was posted.

On the other hand, there are

no indications to suggest that "農口尚彦研究所" is used as a brandname for nihonshu.
k.

In a blog entry dated May 8, 2018 on the website of Kyobashi
Moto (Exhibit Ko 116), along with a photograph bearing the words,"農口尚彦研究所

Yamahai Junmaishu

Murokanamagenshu",there are words such as the following, "In 2017, '農口尚彦研究所'
was established in Komatsu-shi, Ishikawa Prefecture, and theindustry of nihonshu was excited over X Toji's comeback after two
years of absence".

On the other hand, it is difficult to decipherfrom the posted photograph of "nihonshu" that the label on thebottle of nihonshu indicates "農口尚彦研究所".
l.

On the website of Hokuriku Chunichi Shimbun dated August 11,
2018 (Exhibit Ko 24), under the heading, "'農口' takes off to theworld

Sake being offered on ANA international lines", alongwith a photograph of nihonshu, there are words such as thefollowing, "Beginning this fall, the nihonshu of 農口尚彦研究所, asake brewing company in Komatsu-shi, Ishikawa Prefecture, where
Mr. X (85 years old), who is called the 'god of sake brewing', serves
as toji, will start providing nihonshu of 農口尚彦研究所 in inflight meals in the first class on ANA international lines throughout
the year", and "ANA says ... there is usually a reshuffling of
nihonshu from various places every three months, and the yearround use of the same nihonshu is very rare".
9

On the other hand, it

is difficult to decipher from the posted photograph of "nihonshu"
that the label on the bottle of nihonshu indicates "農口尚彦研究所".
m.

On the website of The Chunichi Shimbun as of September 8,2018 (Exhibit Ko 15), under the heading, "Mr. X talks about his
passion towards sake brewing
Hour TV

Appearance tomorrow on the '27-

Ishikawa TV'", there are words such as the following,"Mr. X, (85 years old) who serves as toji at 農口尚彦研究所, asake brewing company in Kanagaso-machi, Komatsu-shi, willappear on the 9th ... on the '27-Hour TV' produced by Fuji TV as
one of the masters of food".

On the other hand, there are no

indications to suggest that "農口尚彦研究所" is used as a brandname for the nihonshu which will be produced in the sake brewery.
n.

In a magazine titled "Tokyo Calendar" published on December
21, 2018 (Exhibit Ko 113), in an article titled "A grown-up's firstdate", there are words such as the following about a female"exclaiming, 'Here is one from "農口尚彦研究所"!', suggesting that
she really likes nihonshu".

o.

In a magazine titled "Chichi February Issue" and published on
January 1, 2019 (Exhibit Ko 112), under the scare-heading,"Continuous search for the best taste", and the heading, "God ofsake and his tireless challenge", an article featuring an interview
was posted, containing words such as the following, "Mr. X, who iscalled the 'god of sake brewing' and 'legendary toji', is 86 years old.
He began studying sake brewing at the age of 16, and he has
dedicated his life to this craftsmanship for 70 years and has becomea modern-day master.

He has won the top award from the National

Sake Appraising and Deliberating Fair for 12 years in a row,
receiving the top award for a total of 27 times during his career, andthere is no end to the fans seeking the taste of his sake", and "Aftera blank of two years, he made a new start at this sake brewery called'農口尚彦研究所' which was completed in November 2017." (page48).

On the other hand, it is difficult to decipher from the posted

photograph of "nihonshu" that the label on the bottle of nihonshu
indicates "農口尚彦研究所".
p.

On the website of Hoshino Resort as of July 23, 2019 (date of
update) (Exhibit Ko 115), under the heading, "Being drunk with the10sake brewing by 'X Toji', the god of Nihonshu", along with aphotograph of Plaintiff and "nihonshu", there are words such as thefollowing, "The sake brewed by 'Noto toji', X, who has pursued
nihonshu.

It is a well-known brand sake of Ishikawa Prefecture,

popular not only at established expensive restaurants but also amongfans overseas in recent years", and "Here are the allure of thick sakeand the world view of new nihonshu, disseminated from '農口尚彦
研 究 所 ', a logical and pioneering sake brewery which wascompletedin

Komatsu-shi,Ishikawa

Prefecturein2017".

Underneath the posted photograph of "nihonshu" are the words,
"From

left,

'Daiginjo'

8,640

Yamahaiseries'Gohyakumangoku' 5,400 yen, Yamahai series 'Aiyama'

5,400

yen, Yamahai series 'Miyamanishiki'yen,

5,400 yen, all 720 ml".

On the other hand, there are no indications to suggest that "農口尚彦研究所" is used as a brand name for nihonshu, and it is difficult
to decipher from the posted photograph of "nihonshu" that the labelon the bottle of nihonshu indicates "農口尚彦研究所".
q.

In a magazine titled "Good Aging Book 2019" (Exhibit Ko 91)
and published on September 12, 2019 (Exhibit Ko 91), under theheadings, "Noguchi Naohiko Sake Institute Inc.

Toji X" and "Thelife as toji who made a comeback at 農口尚彦研究所, as reflectedin the brewing of nihonshu which brings joy", an article introducing
Plaintiff who was awarded "The 17th Good Ager Award" wasposted.

On the other hand, there are no indications to suggest that

"農口尚彦研究所" is used as a brand name for nihonshu.
r.

In a column titled "Landscape with fine sake" in "Forbes 2019
November Issue" published on September 25, 2019 (Exhibit Ko114), under the heading, "農口尚彦研究所
Sake Institute YAMAHAI

Noguchi Naohiko

AIYAMA, a challenging work of sakeproduced by the legendary toji, X, to be enjoyed during a meal",
along with a photograph of "nihonshu", an article introducing
Plaintiff and "農口尚彦研究所

YamahaiAiyama" was posted.

On the other hand, there are no indications to suggest that "農口尚彦研究所" is used as a brand name for nihonshu, and although thephoto of the above nihonshu shows the attachment of a label
indicating a figure of a motif of a hiragana character, "の", and the11like, there is no attachment of a label shaped like a strip andindicating the characters, "農口尚彦研究所", written vertically inblock style.
s.

In the Hokuriku Chunichi Shimbun dated January 29, 2020
(Exhibit Ko 93), under the headings, "Enjoying creative cuisine that
goes well with sake" and "Event at Noguchi Institute in Komatsu",
an article about an event for enjoying creative cuisine that goes wellwith nihonshu being held at a sake brewery called "農口尚彦研究所" was posted.

On the other hand, there are no indications tosuggest that " 農 口 尚 彦 研 究 所 " is used as a brand name fornihonshu.
t.

On the website of ANA as of February 10, 2020 (Exhibit Ko 89),
on a page titled "ANA News", under the heading, "Decision over the
new brand name for 'ANA Nihonshu Selections'", there are words
such as the following, "ANA has decided on a new brand name for'ANA Nihonshu Selections' to be offered during flight and inlounges beginning in March 2020.

The new nihonshu ... wasselected from among 46 brand names from 25 prefectures (*1) ... inaddition to the beloved '農口尚彦研究所’, we have highly rare
brand names which have been cherished by many people over theyears, such as 'Jikon’ and 'Kamoshibito Kuheiji’".
u.

In the Hokuriku Chunichi Shimbun dated February 29, 2020
(Exhibit Ko 94), along with a photograph of the company presidentof a bakery specializing in loaf bread, holding a loaf of bread andnihonshu in his hand, an article was posted to describe the sale ofthe loaf bread, which is created through collaboration between
Shinde Seipansho, a bakery specializing in loaf bread, and 農口尚彦研究所, a sake brewery in Komatsu-shi, and which is made byadding sakekasu [sake lees] into the dough.

On the other hand,

there are no indications to suggest that "農口尚彦研究所" is used asa brand name for nihonshu, and it is difficult to decipher from theposted photograph of "nihonshu" that the label on the bottle ofnihonshu indicates "農口尚彦研究所".
v.

On the website of Sumitomo Mitsui Trust Bank, Limited as ofApril 16, 2020, on a page titled "Sumitomo Mitsui Trust Special
Interview Series" (Exhibit Ko 90), along with a photograph of12Plaintiff and the actor, A, an article about an interview between A
and Plaintiff was posted.

A photograph posted there shows bottlesof "nihonshu" in the background of the persons having the interview.
On the other hand, there are no indications to suggest that "農口尚彦研究所" is used as a brand name for nihonshu, and it is difficult
to decipher from the posted photograph of "nihonshu" that the labelon the bottle of nihonshu indicates "農口尚彦研究所".
w.

In a review site for nihonshu as of April 17, 2020 (date of
update) called "SAKETIME" (Exhibit Ko 88), in a column for"Nihonshu Ranking 2020 in Ishikawa", in regards to "No. 1

農口尚彦研究所", the following review was posted, "'農口尚彦研究所'
is a sake brewery that was newly established in 2017 with the
purpose of passing down X Toji's sake brewing technique and spirit
to the next generation.

X Toji has the nickname of the 'god of sakebrewing', and is one of the top sake brewers in Japan by being
counted as one of 'The four famous sake brewers of Noto'".
B. Consideration
Plaintiff asserts as follows.

Given that the Nihonshu of NNSII was

ranked first in the Nihonshu Ranking 2020 for Ishikawa Prefecture in"SAKETIME", which is a website for ranking nihonshu, and that, on theinternational lines of ANA, Nihonshu of NNSII has been continuously
offered in the first class since 2018, and that, even in various famous
magazines and in TV programs that are broadcasted nationwide, not only
Plaintiff but also "農 口 尚 彦 研 究 所 " is introduced as a leading sakebrewery in Hokuriku, it can be said that not only the name of Plaintiff
himself but also the Nihonshu of NNSII produced by Plaintiff as well as thename of " 農 口 尚 彦 研 究 所 " which sells the nihonshu are widely
recognized among customers, and that, at the time of the JPO Decision,
Cited Trademark was well known or famous as an indicator for the goods,"Japanese sake [Nihonshu]", pertaining to the business of Plaintiff.

As

such, the JPO Decision which found otherwise by denying the namerecognition is incorrect.
(A)

This assertion by Plaintiff is considered below.

As shown in Attachment 2, Cited Trademark consists of thecharacters, "農口尚彦研究所", written vertically in block style.
The goods, "Japanese sake [Nihonshu]", are luxury goods, andcustomers for these goods are general consumers, so that in order to13

consider that Cited Trademark is well known, it is necessary for Cited
Trademark to be widely recognized among general consumers, who are
the customers, as an indicator of "Japanese sake [Nihonshu]" pertaining
to the business of Plaintiff.
(B)

When the above is considered, the following is true.

According to

the findings described above in A, Noguchi Naohiko Sake Institute Inc.,
where Plaintiff serves as toji, has continuously sold nihonshu withaffixed Cited Trademark (Nihonshu of NNSII) since around December
2017, and by the time of JPO Decision (date of judgment on March 27,2020), the sale had continued for approximately one year and fivemonths.

On the other hand, no assertions are made in terms of sales

volume, sales amount, and market share and the like concerning thenihonshu with affixed Cited Trademark, and there is no sufficientevidence to find the sales records for the nihonshu with affixed Cited
Trademark.
(C)

Next, in magazines, newspapers, and websites and the like describedabove in A (D), it is found that Plaintiff is described by words such as"Comeback of X Toji, the god of sake brewing!", "Sake of X, the god ofsake brewing, makes a comeback!", "God of nihonshu, once again inaction!", and "Mr. X, also called the 'god of sake brewing' and'legendary toji'", and that Plaintiff is introduced as restarting sakebrewing as toji at a sake brewery called "農口尚彦研究所" since 2017,
and that the nihonshu with affixed Cited Trademark has been selected
as one of the "Nihonshu Selections" being offered during flight on theinternational lines of ANA in first class since 2018, and also that thesame nihonshu is introduced on the website of ANA as a popular brandname in 2020.
However, in the above magazines, newspapers, and websites and thelike, "農口尚彦研究所" is introduced as a sake brewery where Plaintiff
serves as toji, and there is no clear indication, except for the
aforementioned website of ANA, suggesting that "農口尚彦研究所" isused as a brand name for nihonshu, and even with regard to thephotograph showing nihonshu, it is difficult to decipher from the posted
photograph that the label on the bottle of nihonshu indicates "農口尚彦
研究所".
In addition, according to the articles and the like introducing
14Plaintiff in magazines, newspapers, and websites and the like as
described above in A (D), it can be said that Plaintiff's name, "X", hadstrong name recognition among nihonshu enthusiasts who are highlyinterested in brand names and the like of nihonshu, but it cannot be
acknowledged that the name of "X" was widely known among general
consumers, whose tastes and degrees of pickiness are varied.
Based on the above, it can be acknowledged from the conditions of
posts in magazines, newspapers, and websites and the like as describedabove in A (D) that, at the time of the JPO Decision, the sake brewery
called "農口尚彦研究所" and Nihonshu of NNSII were recognized, toa considerable degree, among nihonshu enthusiasts who are highlyinterested in brand names and the like of nihonshu, but it cannot be
acknowledged that these names were widely recognized among general
consumers, and even more, that Cited Trademark was widely
recognized as an indicator for the goods, "Japanese sake [Nihonshu]",
pertaining to the business of Plaintiff.

There is no other evidence tosufficiently acknowledge as such.
(D)

Based on the above, it cannot be acknowledged that Cited
Trademark was, at the time of the JPO Decision, widely recognizedamong customers as an indicator for the goods, "Japanese sake[Nihonshu]", pertaining to the business of Plaintiff, so that the above
assertion by Plaintiff cannot be accepted.

(2) Similarities between Used Trademarks 1 and 2, and Cited Trademark
A. Used Trademarks 1 and 2(A) a.

As described above in (1) A (B), since 2014, Defendant beganselling the nihonshu that bears the brand name of "農口" placed on thebottle, to which a label of Example of Use 1 or Example of Use 2, asshown in Attachment 1, is attached.
The labels of Example of Use 1 indicate the characters, "農口",written vertically in cursive style (Used Trademark 1), and the label of
Example of Use 2 indicates the characters, "農口", written in blockstyle (Used Trademark 2), respectively, in a large size, and on the left
side of the characters, "農口", there are the characters, "杜氏 X", andthe seal of the artist, "X".
However, the characters, "農口", of Used Trademarks 1 and 2 canbe observed by clearly separating the characters from other character15

parts and the like, so that these characters can be recognized as
constituting an independent indicator of source for the goods.
b.

Used Trademarks 1 and 2 produce the pronunciation of "noguchi"

or "nouguchi", respectively, according to the characters of constitution.
In addition, since it is interpreted that the word, " 農 口 ", isrecognized as a coined word that has no specific meaning, Used
Trademarks 1 and 2 do not generate any specific concept.
(B)

Regarding this point, Plaintiff argues that, in the world of nihonshu,
Plaintiff's name is well known or famous, and that the fact that "農口"represents "X", who is famous toji, is common knowledge among
retailers and fans of nihonshu, so that if Used Trademarks 1 and 2 areaffixed to the "Japanese sake [Nihonshu]" from among the designatedgoods for Trademark, Used Trademarks 1 and 2 will generate theconcept of X, who is a famous toji.
However, as per the findings of the above (1) B (C), while it can besaid that Plaintiff's name, "X", had strong name recognition amongnihonshu enthusiasts who are highly interested in brand names and thelike of nihonshu, it cannot be acknowledged that the name of "X" waswidely known among general consumers, whose tastes and degrees ofpickiness are varied.
Also, in the articles and the like described above in (1) A (D), which
introduce Plaintiff and the sake brewery called "農口尚彦研究所", it isoften the case that Plaintiff is introduced by the full name of "X", andPlaintiff is introduced by the name of "農口" only in the following twocases; namely, "'農口' takes off to the world

Sake being offered on

ANA international lines", and "Mr. X talks about his passion towards
sake brewing" ((1) A (D) l, m).

Given these circumstances, it cannot

be acknowledged, even in the demographic of customers who are
considerably knowledgeable about nihonshu brand names, that the mere
indication of "農口" generates the concept of "X", who is a famous toji.
Accordingly, the above argument by Plaintiff cannot be accepted.
B. Cited Trademark(A)

Cited Trademark consists of the characters, "農口尚彦研究所",
written vertically in block style.
Cited Trademark is shown by the characters being written verticallyin the same font and size, with equal-sized spaces in between, and is16

recognized in the entirety as a unified single mark, so that the trademark,in its entirety, produces the pronunciation of "noguchinaohikokenkyujo"
or "nouguchinaohikokenkyujo" as a set without any pause in between
the characters.
As for Cited Trademark, it generates the concept of "X's institution"or "an institution for studying X".
(B)

Regarding this point, Plaintiff argues that Cited Trademark, "農口尚彦研究所", consists only of Plaintiff's name to which a generic term,"研究所" [meaning "institution" in English], is affixed, so that fromamong the constitution of Cited Trademark, the part of "農口" or "農口尚彦" constitutes the principal part, and if Cited Trademark is affixed tonihonshu, Cited Trademark generates the concept of X, who is a famous
toji.
However, as per the findings of the above (1) B (C), while it can besaid that Plaintiff's name, "X", has strong name recognition amongnihonshu enthusiasts who are highly interested in brand names and thelike of nihonshu, considering that it cannot be acknowledged that thename of "X" was widely known among general consumers, whose tastes
and degrees of pickiness are varied, it cannot be acknowledged that if
Cited Trademark is used for nihonshu, the character part of "農口尚彦"
from among the constitution of Cited Trademark would give a strong
and governing impression to traders and customers as an indicator ofsource for the goods.

Also, while the word, "研究所", is a genericname referring to a place where study is conducted, it cannot be said
that the word is commonplace in the field of nihonshu, and it also
cannot be said that the character part, "研 究所 ", from among theconstitution of Cited Trademark, does not produce a pronunciation orconcept as an indicator of source.
Accordingly, the character part, "農口尚彦", cannot be extracted
from Cited Trademark as the principal part, so that the above assertion
by Plaintiff is groundless in regards to its premise.
C. Similarities
When Used Trademarks 1 and 2 are compared with Cited Trademark,both of Used Trademarks 1 and 2 consist of the two kanji characters, "農口", respectively, whereas Cited Trademark consists of the seven kanji
characters, "農口尚彦研究所 ", so that Used Trademarks 1 and 2 are17

different in appearance from Cited Trademark.
Next, while Used Trademarks 1 and 2 produce the pronunciation of"noguchi" and "nouguchi", respectively, Cited Trademark produces thepronunciationof"noguchinaohikokenkyujo"or"nouguchinaohikokenkyujo", so that Used Trademarks 1 and 2 are different
in pronunciation from Cited Trademark.
While Used Trademarks 1 and 2 do not generate any specific concept,
Cited Trademark generates the concept of "X's institution" or "aninstitution for studying X", so that Used Trademarks 1 and 2 are different
from Cited Trademark in concept as well.
In that case, Used Trademarks 1 and 2 are different from Cited
Trademark in appearance and pronunciation, and even in concept, so that if
Used Trademarks 1 and 2, and Cited Trademark are used for "Japanesesake [Nihonshu]" from among the designated goods of Trademark, itcannot be acknowledged that there is a risk of being misleading andcausing confusion as to the source, so that it cannot be acknowledged that
Used Trademarks 1 and 2 are similar to Cited Trademark.
D. Plaintiff's assertion
Plaintiff makes the following assertions: namely, [i] that the actual
conditions surrounding nihonshu are that even in the case where nihonshu
products bear the same brand name, a large number of products of different
brewing methods, grades, and raw materials and the like are distributed, indifferent price ranges, and it can be said that, in addition to the productname (brand name) itself, various information which can be obtained byreading a label also has the power to attract customers, so that it isreasonable to consider that a trademark that is used for nihonshu is theentire design of the label placed on a product, and that [ii] while the labelsof Used Trademarks 1 and 2, as shown in Attachment 1, have different
colors and backgrounds, they have the characters, "農口", shown at thecenter and generating the concept of "X" or "杜氏 X" [meaning "Toji X"
in English], and on the left side are the characters of "杜氏 X" and a seal of
the artist, "X", and in the labels of Used Trademarks 1 and 2, the principal
part consists of the characters, "農口", which, together with the indicationof the characters, "杜氏 X", leaves a strong impression of the name of "杜氏 X", and that [iii] accordingly, when the entirety of a label placed on a
product bearing Cited Trademark is compared with the entirety of a label of18

Used Trademarks 1 and 2, the trademarks fall under similar trademarks.
However, considering that the characters, "農口", of Used Trademarks
1 and 2 are, as per Example of Use 1 and Example of Use 2 in Attachment
1, indicated at the center of a label in a large size, and can be observed as
being clearly separate from other characters parts and the like so as to berecognized as constituting an independent indicator of source for the goods(as described above in A (A) a), there is no reason to compare the entiretyof the label, which is placed on a product with affixed Cited Trademark,with the entirety of a label of Used Trademarks 1 and 2 in order todetermine the similarities between Used Trademarks 1 and 2, and Cited
Trademark.
Accordingly, the above assertion by Plaintiff cannot be accepted.
(3) Confusion as to the source
Plaintiff asserts that Cited Trademark is well known or famous and that
Used Trademarks 1 and 2 are similar to Cited Trademark, so that if Defendantuses Used Trademarks 1 and 2 for "Japanese sake [Nihonshu]", which aredesignated goods for Trademark, not only is there a risk of causing confusionthat the goods pertain to the business of a person having an organizational or
economical relationship with Plaintiff and " 農 口 尚 彦 研 究 所 ", but also
confusion is actually caused with the goods pertaining to the business of
Plaintiff and "農口尚彦研究所", so that Defendant's use of Used Trademarks
1 and 2 fall under Article 51, paragraph (1) of the Trademark Act, and that the
JPO Decision, which found otherwise, is incorrect.
However, as described above in (1) and (2), it cannot be acknowledged that,at the time of the JPO Decision, the Cited Trademark was widely recognizedamong customers as an indicator for the goods, "Japanese sake [Nihonshu]",
pertaining to the business of Plaintiff, and it cannot be acknowledged that Used
Trademarks 1 and 2 are similar to Cited Trademark, so that the above assertion
by Plaintiff cannot be accepted in regards to its premise.
2. Incorrect determination on being misleading as to quality
Plaintiff asserts that customers have purchased Defendant's nihonshu, which
use Used Trademarks 1 and 2, based on the misunderstanding that such nihonshu
were produced by Plaintiff, and thus the fact that the customers were misled as tothe quality of the goods means that Defendant's use of Used Trademarks 1 and 2 ismisleading as to quality, so that the JPO Decision which found otherwise bydenying this assertion is incorrect.
19

Upon considering the above, it is interpreted that the "quality of the goods", asstipulated in Article 51, paragraph (1) of the Trademark Act, includes, if the goods
are nihonshu (refined sake), the cases where the goods are "tokutei meishoshu"[sake with a specific class name], which is classified according to the differencesin raw materials and production methods, as well as the cases where specific toji
is involved in the production of the goods.
However, as described above in 1 (2) A (A) b, Used Trademarks 1 and 2 do
not generate any specific concept, and do not generate the concept of Plaintiff, sothat it cannot be acknowledged that the nihonshu with affixed Used Trademarks 1
and 2 are misleading by causing others to believe that the nihonshu with affixed
Used Trademarks 1 and 2 were produced with Plaintiff as toji.
Given that the labels placed on the bottles of Defendant's nihonshu indicate, as
per Example of Use 1 and Example of Use 2 on Attachment 1, "杜氏 X" on theleft side of Used Trademark 1 or 2 (as described above in 1 (2) A (A) a), it isacknowledged that customers coming in contact with the above labels would
recognize, from the indication of "杜氏 X", that the nihonshu was brewed with
Plaintiff as toji.

However, this recognition is generated from the indication of "杜氏 X", and it cannot be acknowledged that the recognition resulted from Used
Trademarks 1 and 2 per se, or that Used Trademarks 1 and 2 per se misledcustomers into believing as such.
Accordingly, the above assertion by Plaintiff cannot be accepted.
3. Summary
Based on the above, it cannot be said that Defendant used Used Trademarks 1
and 2, which are similar to Trademark, for their designated goods in order to be
misleading as to quality of the goods or to cause confusion with the goods
pertaining to the business of Plaintiff.

Accordingly, it cannot be acknowledgedthat Defendant's use of Used Trademarks 1 and 2 falls under Article 51, paragraph(1) of the Trademark Act without having to determine whether or not there wasintent on the part of Defendant.
Therefore, the decision rendered by the JPO to the same effect is correct, andthus the reason for rescission as asserted by Plaintiff is groundless.
No. 5

Conclusion

As described above, the reason for rescission as asserted by Plaintiff is groundless,and the JPO Decision has no illegality due to which it should be rescinded.
Therefore, Plaintiff's claim shall be dismissed.

20

Intellectual Property High Court, Fourth Division
Presiding judge:

OTAKA Ichiro

Judge:MOTOYOSHI Hiroyuki

Judge:OKAYAMA Tadahiro

21

(Attachment 1) Used Trademarks 1 and 2[Example of Use 1]

22

23

[Example of Use 2]24

(Attachment 2)

Example of Cited Trademark (page 3 of Exhibit Ko 9)25