Trademark Date

April 11, 2024

Right

Case

2023

number

10115

Court

(Gyo-Ke)Intellectual Property High
Court, Third Division- A case in which, with respect to the Trademark, "Nepal Tiger," represented instandard characters, the court rescinded the decision of the JPO that dismissed arequest for a trial against the examiner's decision of refusal, by finding that theTrademark is not considered to fall under Article 3, paragraph (1), item (iii) and
Article 4, paragraph (1), item (xvi) of the Trademark Act.
Case type: Rescission of Appeal Decision of Refusal
Result: Granted
References: Article 3, paragraph (1), item (iii) and Article 4, paragraph (1), item (xvi)of the Trademark Act
Related rights, etc.: Trademark Application No. 2021-102626, Appeal against
Examiner's Decision of Refusal No. 2022-13795
Summary of the Judgment

1. The Plaintiff filed an application for registration of the trademark , "Nepal Tiger,"
represented in standard characters, while designating Class 27, "carpets, coverings,
mats and matting, rugs, yoga mats, textile wallpaper, wall hangings (not of textile)"(hereinafter referred to as the "Trademark"). As the Plaintiff received an examiner's
decision of refusal, the Plaintiff filed an appeal against examiner's decision of refusal.
The Japan Patent Office (JPO) rendered a decision to dismiss the request for trial(hereinafter referred to as the "JPO Decision"), holding that the Trademark falls under
Article 3, paragraph (1), item (iii) of the Trademark Act, as traders and consumers whocome across the Trademark would only recognize it as an indication of the place oforigin and sale or quality of the goods, not as a mark for distinguishing the trademark
owner's goods from others' goods when the Trademark is used for part of its designatedgoods, "carpets depicting a tiger design or in the shape of a tiger made or sold in Nepal,
coverings depicting a tiger design or in the shape of a tiger made or sold in Nepal, or
rugs depicting a tiger design or in the shape of a tiger made or sold in Nepal," based on
the following findings: [i] Tibet and Nepal have gained worldwide recognition as theplaces of origin and sale of carpets; [ii] carpets handwoven by the Tibetan people arecalled "チベットじゅうたん(chibetto juutan)" (Tibet carpets), and they are produced
and sold also in Nepal, and [iii] " チ ベ ッ ト じ ゅ う た ん (chibetto juutan)" (Tibeticarpets) depicting a tiger or in the shape of a tiger are called "Tibetan Tiger (Rug)" (inalphabet characters), "チベタンタイガー（ラグ）(chibetan taigā (ragu))" (Tibetan tiger(rug)), "チベットタイガー（カーペット） (chibetto taigā (kāpetto))" (Tibet tiger(carpet)) or the like, in combination with the word, "チベタン(Tibetan)" or "チベット(Tibet)," meaning the place of origin or sale, and the word, "Tiger ( タ イ ガ ー ),"meaning a tiger. In addition, as another ground for dismissal, the JPO also determinedthat the Trademark falls under Article 4, paragraph (1), item (xvi) of the Trademark Act
as it is likely to create confusion as to the quality of goods when used for "carpets,
coverings and rugs" other than the abovementioned designated goods.
2. The court held as follows and rescinded the JPO Decision, finding that the Trademark
does not fall under Article 3, paragraph (1), item (iii) or Article 4, paragraph (1), item(xvi) of the Trademark Act.
(1) The reason why a trademark falling under Article 3, paragraph (1), item (iii) of theTrademark Act is regarded as not satisfying the requirements for trademark registrationis understood as follows: this type of trademark is a descriptive mark indicating theattributes of goods in relation to its designated goods, including its place of origin or
sale, and is needed by all traders as a necessary and appropriate indication in trade, andtherefore it is not appropriate from the perspective of public interests to allow a specificperson to exclusively use it; and such trademark is a generally used mark which often
lacks the function to distinguish one's goods from those of others (see 1978 (Gyo-Tsu)
129, judgment of the Third Petty Bench of the Supreme Court of April 10, 1979, Minshu,
Vol. 126, at 507).
Then, for determining whether a trademark applied for registration is a trademark
consisting solely of a mark indicating, in a common manner, the place of origin or saleor quality of the goods in relation to its designated goods, the evaluation should bemade from the standpoint of whether the trademark, at the time of the JPO decision, is
recognized as a necessary and appropriate indication in trade as a mark indicating or
describing the place of origin or sale or quality of the goods in relation to its designatedgoods, and is generally recognized by the relevant traders and consumers as indicating
the place of origin or sale or quality of goods when used for its designated goods, atthat point of time as well as in the future. In addition, whether the trademark is generally
recognized by the relevant traders and consumers as indicating the place of origin orsale or quality of the goods when used for its designated goods should be judged basedon the consideration of the composition of the trademark and actual situation oftransactions concerning the designated goods.
(2) Although it is found that the newspaper articles, magazines and websites submittedii

by the Defendant contain statements indicating the existence of the circumstances relied
upon by the JPO Decision as factors for consideration (1. above), none of these articles,
etc. contains references to "Nepal Tiger" or " ネ パ ー ル タ イ ガ ー (nepaaru taigā)"(Nepal tiger), and none of other websites or other media is found to use a wordconsisting of a series of characters, "Nepal Tiger" or "ネパールタイガー(nepaarutaigā)" (Nepal tiger) in connection with the designated goods regarding the Application.
Consequently, it cannot be found that there is an actual situation of transactions wherein
the series of alphabet characters, "Nepal Tiger," is used by traders and consumers ofcarpets as a word meaning, as a whole, "carpets and rugs made in Nepal depicting atiger or in the shape of a tiger."
In addition, there is no circumstance such as that the word, "Nepal Tiger," in a
combined form is included in a dictionary or is used to refer to a subspecies of tigers ora generic name of tigers. Thus, it is reasonable to consider this word as a coined word
created by integrally combining two words.
Consequently, as the traders and consumers of goods relating to the Trademark
would not always recognize the word, "Nepal Tiger," to represent "carpets, coverings
or rugs made or sold in Nepal, depicting a tiger design or in the shape of a tiger," theTrademark is not regarded as a mark consisting solely of a mark indicating, in acommon manner, the place of origin or sale or quality with respect to its designatedgoods, and therefore is not found to fall under Article 3, paragraph (1), item (iii) of theTrademark Act.
(3) As discussed in (2) above, as the Trademark is not considered as a mark representing
the place of origin or sale or quality of specific goods, it is not considered to fall under
Article 4, paragraph (1), item (xvi) of the Trademark Act because it cannot be
considered as a trademark likely to mislead consumers as to the quality of the goods
even when it is used for goods other than the abovementioned goods out of its
designated goods.

iii

Judgment rendered on April 11, 2024
2023 (Gyo-Ke) 10115
Case of seeking rescission of the JPO decision
Date of conclusion of oral argument: February 13, 2024
Judgment
Plaintiff: X
Defendant: Commissioner of the Japan Patent Office
Main Text
1. The decision made by the Japan Patent Office (JPO) on August 18, 2023, for the caseof Appeal against Examiner's Decision of Refusal No. 2022-13795 shall be rescinded.
2. The court costs shall be borne by the Defendant.
Facts and reasonsNo. 1 Claim
Same as the main text
No. 2 Outline of the case
1. Summary of procedures at the JPO(1) On August 18, 2021, the Plaintiff filed an application for registration of the
trademark, "Nepal Tiger," represented in standard characters, while designating Class27, "carpets, coverings, mats and matting, rugs, yoga mats, textile wallpaper, wall
hangings (not of textile)" (hereinafter referred to as the "Trademark") (Trademark
Application No. 2021-102626; hereinafter referred to as the "Application") (Exhibit Ko
1).
(2) On February 17, 2022, the JPO issued a notice of reasons for refusal of the
Application. The Plaintiff submitted a written opinion on March 29, 2022; however, theJPO rendered an examiner's decision of refusal on June 1, 2022 (hereinafter referred toas the "Examiner's Decision") (Exhibits Ko 2 through 4).
(3) On September 2, 2022, the Plaintiff filed an appeal against examiner's decision ofrefusal (Appeal against Examiner's Decision of Refusal No. 2022-13795) (Exhibit Ko
5).
In response to this appeal, on August 18, 2023, the JPO rendered a decision to theeffect that the request for appeal is groundless (hereinafter referred to as the "JPO
Decision"), with the certified copy of the JPO Decision served upon the Plaintiff on
September 22, 2023.
1

(4) On October 18, 2023, the Plaintiff instituted this action to seek the rescission of the
JPO Decision.
2. Summary of reasons for JPO Decision
The reasons for the JPO Decision, which are stated in the attached written decision(copy), can be summarized as follows:
The alphabet characters, "Nepal" and "Tiger," which constitute the Trademark, areEnglish words for Nepal and a tiger, respectively. Therefore, from the entire
composition of the Trademark, one can easily understand and recognize it to mean a"Nepalese tiger" or the like.
Meanwhile, in relation to part of the designated goods regarding the Application,"carpets, coverings and rugs," the following facts are found: [i] Tibet and Nepal havegained worldwide recognition as places of origin and sale of carpets; [ii] a carpet is a
traditional handicraft of the Tibetan people; [iii] carpets handwoven by the Tibetan
people or Tibetan refugees living in Nepal are called "チベットじゅうたん(chibetto
juutan)" (Tibet carpets); [iv] among "チベットじゅうたん(chibetto juutan)" (Tibet
carpets), carpets depicting a tiger design have been esteemed as they were traditionallymade for high-rank monks, and [v] "チベットじゅうたん(chibetto juutan)" (Tibet
carpets) depicting a tiger design or in the shape of a tiger are called "Tibetan Tiger(Rug)" (in alphabet characters), "チベタンタイガー（ラグ）(chibetan taigā (ragu))"(Tibetan tiger (rug)), "チベットタイガー（カーペット）(chibetto taigā (kāpetto))"(Tibet tiger (carpet)) or the like, in combination with the word "チベタン (Tibetan)"or "チベット (Tibet)" meaning the place of origin and sale, and the word "Tiger (タイガー)" meaning a tiger.
Also taking into account the fact that "チベットじゅうたん (chibetto juutan)"(Tibetan carpets) as mentioned above are also produced and sold in Nepal, even when
the Trademark composed of the alphabet characters, "Nepal Tiger," is used for part ofits designated goods, "carpets depicting a tiger design or in the shape of a tiger made or
sold in Nepal, coverings depicting a tiger design or in the shape of a tiger made or soldin Nepal, or rugs depicting a tiger design or in the shape of a tiger made or sold in
Nepal," traders and consumers who come across the Trademark would only recognize
it as an indication of the place of origin and sale or quality of the goods, not as a markfor distinguishing the trademark holder's goods from others' goods.
Therefore, the Trademark falls under Article 3, paragraph (1), item (iii) of theTrademark Act. In addition, it also falls under Article 4, paragraph (1), item (xvi) of
the same Act as it is likely to create confusion as to the quality of goods when used for"carpets, coverings and rugs" other than the abovementioned designated goods.
23. Grounds for rescission(1) Ground for rescission 1
The error in the JPO's finding that the Trademark falls under Article 3, paragraph(1), item (iii) of the Trademark Act(2) Ground for rescission 2
The error in the JPO's finding that the Trademark falls under Article 4, paragraph(1), item (xvi) of the Trademark Act
No. 4 Judgment of this court
1. Ground for rescission 1 (the error in the JPO's finding that the Trademark falls under
Article 3, paragraph (1), item (iii) of the Trademark Act)
(1) Criteria for determination
The reason why a trademark falling under Article 3, paragraph (1), item (iii) of theTrademark Act is regarded as not satisfying the requirements for trademark registrationis understood as follows: this type of trademark is a descriptive mark indicating theattributes of goods in relation to its designated goods, including its place of origin or
sale, and is needed by all traders as a necessary and appropriate indication in trade, andtherefore it is not appropriate from the perspective of public interests to allow a specificperson to exclusively use it; and such trademark is a generally used mark which often
lacks the function to distinguish one's goods from those of others (see 1978 (Gyo-Tsu)
129, judgment of the Third Petty Bench of the Supreme Court of April 10, 1979, Minshu,
Vol. 126, at 507).
Then, for determining whether a trademark applied for registration is a trademark
consisting solely of a mark indicating, in a common manner, the place of origin or saleor quality of the goods in relation to its designated goods, the evaluation should bemade from the standpoint of whether the trademark, at the time of the JPO decision, is
recognized as a necessary and appropriate indication in trade as a mark indicating or
describing the place of origin or sale or quality of the goods in relation to its designatedgoods, and is generally recognized by the relevant traders and consumers as indicating
the place of origin or sale or quality of goods when used for its designated goods, atthat point of time as well as in the future. In addition, whether the trademark is generally
recognized by the relevant traders and consumers as indicating the place of origin orsale or quality of the goods when used for its designated goods should be judged basedon the consideration of the composition of the trademark and actual situation oftransactions concerning the designated goods.
(2) Composition of the Trademark
3

The Trademark is "Nepal Tiger" represented in standard characters.
"Nepal Tiger" is the combination of alphabet characters, "Nepal" and "Tiger.""Nepal" represents the state of Nepal, and "Tiger" a tiger (Exhibits Otsu 1 through 4).
(3) Actual situation of transactions with respect to the Trademark and the designatedgoods regarding the Application
A. The following newspaper articles and websites contain a statement that hand-woven
carpets are made in Nepal, and statements concerning exhibition and sale of handwoven carpets and rugs made in Nepal or imported from Nepal at a trade fair and otherevents held in Japan.
(A) Asahi Shimbun (December 17, 2019) (Exhibit Otsu 5)(B) Yomiuri Shimbun (November 24, 2019) (Exhibit Otsu 6)(C) Asahi Shimbun (October 23, 2003) (Exhibit Otsu 7)(D) Nikkei Business Daily (August 19, 1993) (Exhibit Otsu 8)(E) Website of "terrier de sautillé" (Exhibit Otsu 9)(F) Website of "TSUCHIYA HOMETOPIA" (Exhibit Otsu 10)(G) Yamagata Shimbun (March 23, 2019) (Exhibit Otsu 11)
B. The following newspaper articles, book and websites contain statements to the effectthat hand-woven carpets are made in Tibet, that carpets made in Tibet are called "チベ
ッ ト じ ゅ う た ん (chibetto juutan)" (Tibetan carpet) or " チ ベ タ ン じ ゅ う た ん(chibetan juutan)" (Tibetan carpet), that carpets made in Nepal are also called "チベッ
トじゅうたん(chibetto juutan)" (Tibetan carpet) or "チベタンラグ(chibetan ragu)"(Tibetan rug), and also that Tibetan refugees who escaped from Tibet to Nepal or are
living in Nepal are making carpets in Nepal.
(A) Mainichi Shimbun (December 3, 2008) (Exhibit Otsu 12)(B) Website of "academic accelerator" (Exhibit Otsu 13)(C) Website of "CarpetEncyclopedia.jp" (Exhibit Ko 11, Exhibit Otsu 14)(D) Website of "Blog-ban, Tirakita Rakuda Tsushin" (Tirakita Camel news, blog
version) (Exhibit Ko 12, Exhibit Otsu 15)(E) Asahi Shimbun (March 18, 2007) (Exhibit Otsu 16)(F) "Chikyu no arukikata 2021-22 Nepaaru to Himaraya Torekkingu" (Globe-trotter
Travel Guidebook 2021-22, Trekking in Nepal and Himalaya) (Kabushiki Kaisha
Diamond Big Sha) (Exhibit Otsu 17)(G) Hokkaido Shimbun (November 20, 2014) (Exhibit Otsu 18)
C. The following websites contain statements using the word, "タイガー(taigā)" (tiger),for the promotion of carpets depicting a tiger design or tiger-shaped carpets, such as: "アニマルラグマットタイガー(animaru ragu matto taigā)" (animal rug mat tiger), "4

タイガーラグ(taigā ragu)" (tiger rug), and "タイガーラグマット(taigā ragu matto)"(tiger rug mat).
(A) Website of "Land Lifestyle Shop" (Exhibit Otsu 19)(B) Website of "MALTO" (Exhibit Otsu 20)(C) Website of "R&M Interior Store" (Exhibit Otsu 21)(D) Website of "RINKY DINK" (Exhibit Otsu 22)(E) Website of "POST GENERAL ONLINE STORE" (Exhibit Otsu 23)(F) Website of "Chiyoda Jutan Company" (Exhibit Otsu 24)(G) Website of "norbu" (Exhibit Otsu 25)(H) Website of "amazon.co.jp" (Exhibit Otsu 26)
D. The following newspaper and website contain the promotional statement introducing" チ ベ タ ン カ ー ペ ッ ト (chibettan kāpetto)" (Tibetan carpet) or " チ ベ タ ン ラ グ(chibetan ragu)" (Tibetan rug) depicting a tiger design, using the word, "タイガー(taigā)" (tiger), in connection with "タイガーボディラグ(taigā body ragu)" (tiger
body rug) or "タイガーラグ(taigā ragu)" (tiger rug) referenced therein.
(A) Website of "PHOO CHA" (Exhibit Otsu 27)(B) Kumamoto Nichinichi Shimbun (May 24, 1996) (Exhibit Otsu 29)
E. The following websites feature Tibetan carpets or Tibetan rugs made in Nepal thatuse a tiger pattern or motif, using the word, "タイガー(taigā)" (tiger) or "トラ(tora)"(tiger), in connection with "チベットじゅうたんタイガー (chibetto juutan taigā)"(Tibet carpet tiger), "ラッキータイガーラグ(rakkii taigā ragu)" (lucky tiger rug) or "チベットトラ敷物(chibetto tora shikimono)" (Tibet tiger covering) referenced therein.
(A) Website of "Creema" (Exhibit Ko 14, Exhibit Otsu 28)(B) Website of "TONERI RUGs" (Exhibit Otsu 30)(C) Website of "Mardi k.k" (Exhibit Otsu 31)
F. The following websites feature a tiger-shaped Tibetan carpet, using the word, "チベ
タンタイガーラグ(chibetan taigā ragu)" (Tibetan tiger rug). This word is also foundin websites stated in Exhibits Otsu 47 through 57.
(A) Website of "BAYCREW'S STORE" (Exhibit Ko 15, Exhibit Otsu 34)(B) Website of "CIBONE" (Exhibit Ko 17, Exhibit Otsu 35)(C) Website of "plywood" (Exhibit Ko 19, Exhibit Otsu 36)(D) Website of "amazon.co.jp" (Exhibit Otsu 37)(E) "Popai Heya to Shiti Boi 3) (POPEYE, Room and city boy 3) (Magazine House Co.,
Ltd.) (Exhibit Otsu 38)
G. The following websites feature tiger-shaped carpets made in or imported from Nepal,
using the words, "チベタンタイガーラグ(chibetan taigā ragu)" (Tibetan tiger rug) or5

"チベタンタイガーカーペット(chibetan taigā kāpetto)" (Tibetan tiger carpet).
(A) Website of "SLOWTIGER" (Exhibit Ko 16, Exhibit Otsu 39)(B) Website of "Kawachen Net Shop" (Exhibit Otsu 40)(C) Website of "HappyHour" on "Rakuten Ichiba" (Exhibit Otsu 41)(D) Website of "LAID BACK STORE" (Exhibit Otsu 42)(E) Website of "PRTIMES" (Exhibit Otsu 43)(F) Website of "TIGER WITH WING" (Exhibit Otsu 44)(G) Website of "Suekichi Blog" (Exhibit Otsu 45)(H) Website of "YAHOO! Furima" (Exhibit Otsu 46)
H. None of the newspaper articles, books or websites mentioned in A. through G. above
uses the word, "Nepal Tiger" or "ネパールタイガー(nepaaru taigā)" (Nepal tiger).
(4) Discussions
A. From the newspaper articles, magazine articles and websites mentioned in (3) above,
the following facts can be found:(A) Carpets are made in Nepal.
(B) A statement that migrants or refugees from Tibet to Nepal are making carpets isfound on multiple websites and other media.
(C) References to "チベットカーペット(chibetto kāpetto)" (Tibet carpet) or similarwords, such as "チベタンじゅうたん(chibetan juutan)" (Tibetan carpet) or "チベタンラグ(chibetan ragu)" (Tibetan rug), which mean carpets made in Nepal, are found on
multiple websites and other media.
(D) There are multiple websites containing statements using the word, "タ イガ ー(taigā)" (tiger), for promoting carpets depicting a tiger design or tiger-shaped carpets.
(E) There are multiple websites and other media mentioning "チベタンタイガーラグ(chibetan taigā ragu)" (Tibetan tiger rugs) or "チベタンタイガーカーペット(chibetantaigā kāpetto)" (Tibetan tiger carpets) to mean a tiger-shaped "チベットじゅうたん(chibetto juutan)" (Tibet carpet) (or "チベタンじゅうたん(chibetan juutan)" (Tibetan
carpet) or "チベタンラグ(chibetan ragu)" (Tibetan rug)).
(F) There are multiple websites and other media containing statements featuring tigershaped carpets made in Nepal or imported from Nepal.
B. However, as mentioned in (3)H. above, none of the newspaper articles, books or
websites mentioned in (3)A. through G. above contains the word, "Nepal Tiger" or "ネ
パールタイガー(nepaaru taigā)" (Nepal tiger), and even considering the entirety of theevidence presented in this case, none of other websites or other media uses a wordconsisting of a series of characters, "Nepal Tiger" or "ネパールタイガー(nepaarutaigā)" (Nepal tiger), in connection with the designated goods regarding the Application.
6

Consequently, it cannot be found that there is an actual situation of transactions
wherein the series of alphabet characters, "Nepal Tiger," is used by traders andconsumers of carpets as a word meaning, as a whole, "carpets and rugs made in Nepal
depicting a tiger or in the shape of a tiger," or wherein the word, "Nepal Tiger," isotherwise used as a whole in connection with the designated goods regarding theApplication.
Further, whereas the word, "Nepal Tiger," can be considered as a combination of
the words, "Nepal" and "Tiger," that have the meanings as explained in (2) above; theword, "Nepal Tiger," in a combined form cannot be found in a dictionary, or no such
word as "Nepal Tiger," "ネパールタイガー(nepaaru taigā)" (Nepal tiger) or "ネパールトラ(nepaaru tora)" (Nepal tiger) referring to a subspecies of tigers or as a genericname of tigers is found to exist.
Thus, as the word, "Nepal Tiger," represents a well-balanced, integral combinationof the words, "Nepal" and "Tiger," that are not usually combined, it is reasonable toconsider it as a coined word created by integrally combining these two words.
C. The designated goods for the Trademark are as stated in No. 2, 1.(1) above.
Considering the details of these designated goods, it is found that traders of goods
relating to the Trademark are carpet makers and sellers, and consumers are general
consumers.
Further, as discussed in B. above, with respect to the word, "Nepal Tiger," no actual
situation of transactions can be found wherein it is used in connection with thedesignated goods regarding the Application, and it is reasonable to consider this word
as a coined word created by integrally combining two words. Based on thesecircumstances, the traders and consumers of goods relating to the Trademark would not
immediately recognize the word, "Nepal Tiger," as indicating the place of origin or saleor quality of the goods in relation to its designated goods.
Then, the traders and consumers of goods relating to the Trademark would notalways recognize the word, "Nepal Tiger," to represent "carpets made or sold in Nepal,
depicting a tiger design or in the shape of a tiger," "coverings made or sold in Nepal,
depicting a tiger design or in the shape of a tiger," or "rugs made or sold in Nepal,
depicting a tiger design or in the shape of a tiger." Therefore, the Tra demark is notconsidered as a mark which is generally recognized by the relevant traders andconsumers as indicating the place of origin or sale or quality of the goods when used
for its designated goods.
D. Based on the above, the Trademark cannot be considered as a mark needed by all
traders as a necessary and appropriate indication in trade or a trademark consisting7

solely of a mark indicating, in a common manner, the place of origin or sale or quality
with respect to its designated goods. Therefore it is not found to fall under Article 3,
paragraph (1), item (iii) of the Trademark Act.
(5) Determination as to the Defendant's arguments
The Defendant argues that, as stated in No. 3, 1. (Defendant's arguments) above,
the following facts can be confirmed in relation to part of the designated goods
regarding the Application, "carpets, coverings and rugs": [i] Nepal is traditionallyknown as the place of origin or sale of carpets; [ii] Tibetan carpets represent a
traditional handicraft of the Tibetan people and are hand-woven by the Tibetan people
and Tibetan refugees living in Nepal; [iii] the word, "Tiger" or "タイガー(taigā)"(tiger), is generally used as the word to represent a tiger design, pattern or shape in
relation to part of the designated goods regarding the Application, "carpets, coverings
and rugs;" and [iv] "チベットじゅうたん(chibetto juutan)" (Tibet carpets) depicting
a tiger design or in the shape of a tiger are called "Tibetan Tiger (Rug)," "チベタンタ
イガー（ラグ）(chibetan taigā (ragu))" (Tibetan tiger (rug)) or "チベットタイガー（カーペット）(chibetto taigā (kāpetto))" (Tibet tiger (carpet)), in combination witha word representing the place of origin or sale. The Defendant then argues thatconsidering these facts in their entirety, the alphabet characters, "Nepal" and "Tiger,"that are the elements of the Trademark, are seen as the combination of the words,"Nepal" representing the place of origin or sale and "Tiger" representing the design or
shape of a tiger, in relation to part of the designated goods regarding the Application,"carpets, coverings and rugs."
However, even admitting that there are several websites and other media mentioningthat carpets are made in Nepal or that Tibetan migrants to Nepal are making carpets in
Nepal, or referring to "チベットじゅうたん(chibetto juutan)" (Tibet carpet) or similarwords including "チベタンじゅうたん(chibetan juutan)" (Tibetan carpet) or "チベタンラグ(chibetan ragu)" (Tibetan rug) as meaning carpets made in Nepal ((3)A. and B.
above), the existence of these references in websites and other media does not provide
sufficient evidence to prove that the traders and consumers of goods relating to theTrademark generally recognize the facts and circumstances alleged to be included
therein, and no other sufficient evidence is presented to prove that these facts orcircumstances are generally recognized by the traders and consumers of goods relating
to the Trademark.
In addition, although there are multiple statements on websites and other mediausing the word, "タ イ ガ ー (taigā)" (tiger), for promoting carpets depicting a tiger
design or tiger-shaped carpets ((3)C. through F. above), in all of these statements, the8word, "タイガー(taigā)" (tiger), is used in combination with a word representing a
product item, such as "ラグ(ragu)" (rug) or "じゅうたん(juutan)" (carpet), and no
actual situation of transactions can be found wherein the word, "タイガー (taigā)"(tiger), alone indicates "carpets, coverings or rugs depicting a tiger design or in the
shape of a tiger."
Further, from the fact found in (3) above, the fact that "チベットじゅうたん(chibetto juutan)" (Tibet carpets) depicting a tiger design or in the shape of a tiger are
called "Tibetan Tiger (Rug)", "チベタンタイガー（ラグ）(chibetan taigā (ragu))"(Tibetan tiger (rug)), or "チベットタイガー（カーペット）(chibetto taigā (kāpetto))"(Tibet tiger (carpet)) can be found. In addition, the fact that carpets depicting a tiger
design or in the shape of a tiger are also made by craftsmen in Nepal can be found fromthe abovementioned websites for promoting products named "Tibetan Tiger (Rug)" or"チベタンタイガー（ラグ）(chibetan taigā (ragu))" (Tibetan tiger (rug)), according
to the following promotional statements: "Hand-woven by craftsmen in Nepal: it takes
over one month to complete" (Exhibit Otsu 39); "Hand-made 'チベットカーペット(chibetto kāpetto)' (Tibet carpets) with Tibetan traditional tiger design ... a popular
design of a shop run by a Tibetan Buddhist Dge-lugs-pa sect temple in Nepal, made ina specialized carpet workshop" (Exhibit Otsu 40); "Genuine 'チベタンタイガーラグ(chibetan taigā ragu)' (Tibetan tiger rugs) made by Nepalese craftsmen ... hand-madeby Tibetan refugees living in Nepal, taking a long time to complete, using original yarns
made of hand-twisted wool threads" (Exhibit Otsu 41); "Nepalese hand-woven 'チベタ
ンタイガーラグ(chibetan taigā ragu)' (Tibetan tiger rugs)," "Purchased, directly in
Nepal, products hand-made by craftsmen in a Tibetan settlement in Nepal, which took
over two months to complete" (Exhibit Otsu 42); "A 'チベタンタイガーラグ(chibetantaigā ragu)' (Tibetan tiger rug) is a Nepalese craftwork. 'チベットじゅうたん(chibetto
juutan)' (Tibetan carpet) hand-woven by Tibetan refugees living in Nepal" (Exhibit
Otsu 45); and "A genuine 'チベットトラ(chibetto tora)' (Tibet tiger) imported from
Nepal! 'チベタンタイガーラグ(chibetan taigā ragu)' (Tibetan tiger rug)" (Exhibit
Otsu 46). However, all of these carpets depicting a tiger design or in the shape of a tiger
made by craftsmen in Nepal are also called "Tibetan Tiger (Rug)," "チベタンタイガー（ラグ）(chibetan taigā (ragu))" (Tibetan tiger (rug)), or "チベットタイガー（カーペット）(chibetto taigā (kāpetto))" (Tibet tiger (carpet)), and no actual situation oftransactions can be found wherein these carpets are called "Nepal Tiger" or "ネパール
タイガー(nepaaru taigā)" (Nepal tiger).
Accordingly, even considering the totality of the circumstances including that [i]Nepal is known as the place of origin or sale of carpets, [ii] Tibetan carpets represent a9

traditional handicraft of the Tibetan people and are hand-woven by the Tibetan people
and Tibetan refugees living in Nepal, [iii] the alphabet letters or characters, "Tiger" or"タイガー(taigā)" (tiger), are generally used as a word representing a tiger pattern,
design or shape in relation to part of the designated goods regarding the Application,"carpets, coverings and rugs", and [iv] " チ ベ ッ ト じ ゅ う た ん (chibetto juutan)"(Tibetan carpets) depicting a tiger design or in the shape of a tiger are called "チベタンタイガー（ラグ）(chibetan taigā (ragu))" (Tibetan tiger (rug)), or "チベットタイ
ガー（カーペット）(chibetto taigā (kāpetto))" (Tibet tiger (carpet)), it cannot be foundthat traders and consumers of goods relating to the Trademark would recognize the part
"Nepal" of the Trademark to represent the place of origin or sale of carpets and ot her
items, and the part "Tiger" of the Trademark to represent the motif or shape of a tiger
depicted on a carpet. Consequently, the Trademark cannot be considered as a markgenerally recognized by the relevant traders and consumers as indicating the place oforigin or sale or quality of goods when used for its designated goods.
Therefore, the abovementioned arguments of the Defendant are unacceptable.
2. Ground for rescission 2 (error in the determination as to whether the Trademark falls
under Article 4, paragraph (1), item (xvi) of the Trademark Act)As discussed in 1. above, as the Trademark cannot be considered as a markrepresenting the place of origin or sale or quality of specific goods, it is not found to bea trademark likely to mislead consumers as to the quality of the goods even when it isused for goods other than part of its designated goods, "carpets made or sold in Nepal,
depicting a tiger design or in the shape of a tiger," "coverings made or sold in Nepal,
depicting a tiger design or in the shape of a tiger," and "rugs made or sold in Nepal,
depicting a tiger design or in the shape of a tiger," and therefore is not considered tofall under Article 4, paragraph (1), item (xvi) of the Trademark Act.
Even examining the details of No. 3, 2. (Defendant's arguments) above, theconclusion as mentioned above is in no way affected.
3. Conclusion
Based on the above, the Trademark cannot be considered as a mark consisting solelyof a mark indicating, in a common manner, the place of origin or sale or quality withrespect to its designated goods, and therefore is not considered to fall under Article 3,
paragraph (1), item (iii) of the Trademark Act. In addition, it is not found to be atrademark likely to mislead consumers as to the quality of the goods, and therefore does
not fall under Article 4, paragraph (1), item (xvi) of the same Act. Accordingly, both
Grounds for Rescission 1 and 2 are well-grounded and the JPO Decision should be
rescinded.
10In conclusion, the court finds the Plaintiff's claim to be well-grounded and grants it,
and renders a judgment as stated in the main text.
Intellectual Property High Court, Third Division
Presiding Judge: SHOJI Tamotsu
Judge: IMAI Hiroaki
Judge: MIZUNO Masanori(A copy of the attached Written Decision is omitted.)11