Trademark Date
Right
Case number

March 7, 2023
2022 (Gyo-Ke) 10101

Court Intellectual Property
High Court, Fourth
Division- The trademark of this application has elements identical to the mark related todesignation of signs or hallmarks indicating control and warranty by Malaysia
designated and publicly notified by the Minister of Economy, Trade and Industry,
and the designated goods are identical or similar to the goods for which the signs orhallmarks designated by the Minister are used and thus, the trademark falls under
Article 4, paragraph (1), item [v] of the Trademark Act.
- The Plaintiff asserted that the official translation in Japanese of Article 6-3(1)(a) of
the Paris Convention has errors, but it cannot be considered to be erroneousgrammatically, and in view of the drafting process of the provisions described above,it cannot be determined to be erroneous translation, and even if it has an error, ourcountry is not obliged to withhold refusal of a registration application with the"permission of the competent authority" on the grounds of the Article, or it should
not be construed, either, that the "registration should be made" by narrowing theapplication range of Article 4, paragraph (1), item (v) of the Trademark Act on the
grounds of the Article.
Case type: Rescission of Appeal Decision
Result: Dismissed
References: Article 4, paragraph (1), item (v) of the Trademark Act
Related rights, etc.: Appeal against Examiner's Decision of 2021-008337, Trademark
Application No. 2019-117766
Summary of the Judgment
No. 1
1Outline of the case
Outline of procedures at the JPO and the like(1) The Plaintiff filed an application for trademark registration (Trademark
Application No. 2019-117766, hereinafter, referred to as "the Application") for the
trademark, which has the elements in attachment 1-1 to the judgment (hereinafter,
referred to as "the Trademark") with the goods and services described in the Application
belonging to Class 5, Class 10, Class 29, Class 30, Class 32, Class 42, and Class 43 as
the designated goods and the designated services on September 4, 2019 , but received anotice of reasons for refusal as of October 9, 2020.

The Plaintiff submitted a written

amendment as of January 21, 2021, but received the examiner's decision of refusal asof March 22 of the same year and thus, submitted a written amendment on June 24 of
the same year (hereinafter referred to as "the Amendment") and filed the appeal against
the examiner's decision of refusal.
(2) The Japan Patent Office examined the appeal as case of Appeal against
Examiner's Decision of 2021-008337, rendered the decision (the JPO decision) that "theiappeal against the decision is dismissed" on May 18, 2022, and a certified copy thereof
was delivered to the Plaintiff on June 1 of the same year.
(3) The Plaintiff filed a lawsuit against the JPO decision on September 29, 2022.
2

Outline of the JPO decision

The Trademark has elements identical to the mark related to the "designation ofsigns or hallmarks indicating control or warranty by Malaysia" (Ministry of Economy,
Trade and Industry Public Notice No. 196, September 26, 2014) notified from theInternational Bureau of the World Intellectual Property Organization (WIPO) by Article
6-3(3) of the Paris Convention and specified and publicly notified by the Minister of
Economy, Trade and Industry on the grounds of the provisions in Article 4, paragraph(1), item (v) of the Trademark Act, and the designated goods after the Amendment of
the Trademark are identical or similar to the goods and services for which the signs orhallmarks designated by the Minister of Economy, Trade and Industry are used.
Therefore, since the Trademark is used for goods identical or similar to the goods
for which the signs or hallmarks indicating control by the Malaysian government or the
local government are used, it falls under Article 4, paragraph (1), item (v) of theTrademark Act.
No. 2
1

Summary of determination
Elements of the Trademark are as described in attachment 1-1 to the judgment

and are identical to the elements designated by the Minister of Economy, Trade andIndustry as signs and hallmarks indicating control and warranty by Malaysia.
Moreover, the designated goods or the designated services of the Trademark aredesignated goods which are identical or similar to "Meat.
Meat extracts.
Compotes.

Fish.

Poultry and game.

Preserved, dried, and cooked fruits and vegetables.
Eggs.

Milk and other milk products.

Processed marine products.

Rice.

other non-alcoholic beverages.

Soybeans.

Jellies.

Jams.

Oils and fats for food.

Mineral water.

Aerated water andFruit beverages and fruit juices." in the goods andservices for which the signs and hallmarks indicating control and warranty by Malaysia
designated by the Minister of Economy, Trade and Industry are used.
Then, even if the Plaintiff is a corporation, "which is a governmental organ basedon the laws of Malaysia and has authority to dispose of and to manage property", theTrademark is a trademark which is identical to those designated by the Minister of
Economy, Trade and Industry among the signs or hallmarks indicating control andwarranty by the governments of the union countries of the Paris Convention andmember countries of the World Trade Organization and used for goods which are
identical or similar to the goods for which the signs or hallmarks are used and thus, itiifalls under Article 4, paragraph (1), item (v) of the Trademark Act.
2

The Plaintiff asserted that, on the premise of the provisions (Article 29(1)(c)),

in the case of a difference in interpretation of the Paris Convention, French sentences
shall be used, "à défaut d'autorisation des pouvoirs compétents," (without authorizationby the competent authorities) should be construed to relate not only to ", par desmesures appropriées," (to prohibit by appropriate measures) but also to "de refuser ou
d'invalider l'enregistrement et d'interdire," (to refuse or to invalidate the registration),and the official translation of the provisions is erroneous translation, and Article 4,paragraph (1), item (v) of the Trademark Act based on that does not perform theenforcement obligation of the domestic laws in Article 6-3(1)(a) of the Paris
Convention, but since the phrase "à défaut d'autorisation des pouvoirs compétents,"(without authorization by the competent authorities) is inserted as an adverb phrase
connected with "l'utilisation," by "," in the original, and the wording can begrammatically read as "à défaut d'autorisation des pouvoirs compétents," qualifies only"d'interdire ... l'utilisation" (to prohibit use) and also as it qualifies "de refuser ou
d'invalider l'enregistrement et d'interdire," (to refuse or to invalidate the registration)and from the drafting process in which the wording "without authorization by thecompetent authorities" was drafted to quality only the "d'interdire ... l'utilisation" at the
beginning but it was rewritten to the original described above in the proposed
convention presented by the Drafting Committee to the General Meeting and was
finalized as it is, whereby two ways of grammatical construction were made possible,
it cannot be determined that "à défaut d'autorisation des pouvoirs compétents," iserroneous translation of Article 6-3(1)(a) of the Paris Convention even on the premisethat "à défaut d'autorisation des pouvoirs compétents," qualifies only "d'interdire ...
l'utilisation" as in the official translation in Japanese.
Moreover, even if the construction as pointed out by the Plaintiff; that is, theconstruction that the registration as trademarks or as elements of trademarks of armorial
bearings and the like of the countries of the Union "without authorization by thecompetent authorities" is refused or invalidated is adopted, the provisions do notprescribe how to handle the registration application with "authorization by thecompetent authorities" (it cannot be interpreted that, as the opposite construction to "torefuse or to invalidate the registration as trademarks or as elements of trademarks" ofthese armorial bearings, the allied nations are obliged by the Convention to naturally
register the case other than the above) and thus, our country shall not bear the obligation
not to refuse the registration application "with authorization by the competentauthorities" on the basis of the Article above or shall not be interpreted to grant "theiiiregistration" by narrowing the application range of Article 4, paragraph (1), item (v) of
the Trademark Act on the grounds of the Article above.

iv

Rendition of judgment on March 7, 2023
2022 (Gyo-Ke) 10101 Case of seeking rescission of JPO decision
Date of conclusion of oral argument: January 17, 2023
Judgment
Plaintiff: Jabatan Kemajuan Islam Malaysia (JAKIM)
Defendant: Commissioner of JPO
Main text
1. Plaintiff's appeal shall be dismissed.
2. Plaintiff shall bear the court costs.
3. An additional period of 30 days shall be set for filing a final appeal and a petition
for acceptance of a final appeal against this judgment.
Facts and reasonsNo. 1 Claim
Rescission of the decision made by the JPO on May 18, 2022 for the case of
Appeal against Examiner's Decision of 2021-008337.
No. 2 Background
1. History of procedures at JPO (matters over which there is no dispute between theparties)(1)

On September 4, 2019, the Plaintiff filed an application for trademark
registration (Trademark Application No. 2019-117766; hereinafter referred to as"the Application") for the trademark, which has the elements in Attachment 1 -1
(hereinafter referred to as "the Trademark") with the designated goods and services
described in the Application being the designated goods in Class 5, Class 10, Class
29, Class 30, Class 32, Class 42, and Class 43, but received a notice of reasons forrefusal as of October 9, 2020.

The Plaintiff submitted a written amendment as ofJanuary 21, 2021, but received the examiner's decision of refusal as of March 22 of
the same year and thus, submitted a written amendment on June 24 of the same year
(hereinafter referred to as "the Amendment") and filed the appeal against theexaminer's decision of refusal (the designated goods after the Amendment are as per
Attachment 1-2).
1

(2)The Japan Patent Office examined the appeal as case of Appeal against
Examiner's Decision of 2021-008337, rendered the decision (the JPO decision) that"the appeal against the decision is dismissed" on May 18, 2022, and a certified copy
thereof was delivered to the Plaintiff on June 1 of the same year (the additional
period for response was set for 90 days).

(3)

On September 29, 2022, the Plaintiff filed the lawsuit of the present case seeking
rescission of the JPO decision.

2. Outline of the JPO decision
The Trademark has elements identical to the mark (Attachment 2-1) related tothe "designation of signs or hallmarks indicating control or warranty by Malaysia"(Ministry of Economy, Trade and Industry Public Notice No. 196, September 26,2014) notified from the International Bureau of the World Intellectual Property
Organization (WIPO) by Article 6-3(3) of the Paris Convention and specified andpublicly notified by the Minister of Economy, Trade and Industry on the grounds ofthe provisions in Article 4, paragraph (1), item (v) of the Trademark Act.
Furthermore, the designated goods after the Amendment of the Trademark are
identical or similar to the goods and services for which the signs or hallmarks
designated by the Minister of Economy, Trade and Industry are used (Attachment
2-2), at least in regard to the goods of "Meat.
extracts.
Compotes.

Fish.

Poultry and game.

Preserved, dried, and cooked fruits and vegetables.
Eggs.

Milk and other milk products.

Processed marine products.

Rice.

Soybeans.

water and other non-alcoholic beverages.

Jellies.

Meat
Jams.

Oils and fats for food.

Mineral water.

Carbonated

Fruit beverages and fruit juices."

In that case, the Trademark is a trademark which is used for goods which are
identical or similar to the goods for which the signs or hallmarks indicating control
by the Malaysian government or the local government are used and thus, it falls
under Article 4, paragraph (1), item (v) of the Trademark Act.
3. Cause for rescission
Erroneous determination as to the applicability of Article 4, paragraph (1), item (v)of the Trademark Act(omitted)
No. 4 Judgment of this court
1. Applicability of the Trademark to Article 4, paragraph (1), item (v) of theTrademark Act
2

(1) Article 4, paragraph (1) of the Trademark Act provides for the trademarks whichcannot be granted trademark registration.

In the same paragraph, item (v)stipulates as follows about a trademark which "comprises a mark identical with,or similar to, an official hallmark or sign indicating control or warranty by thenational government of Japan, a country party to the Paris Convention (Noteinserted by the court: It refers to the "Paris Convention for the protection ofindustrial property of March 20, 1883, as revised at Brussels on December 14,
1900, at Washington on June 2, 1911, at The Hague on November 6, 1925, atLondon on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on
July 14 1967 (Japanese Treaty of March No. 2, March 1975")), a member of theWorld Trade Organization, or a Contracting Party to the Trademark Law Treaty
which has been designated by the Minister of Economy, Trade and Industry, if
the trademark is used in connection with goods or services identical with, orsimilar to, the goods or services in connection with which the hallmark or sign
is used".
(2) A Malaysia [1] became a member state, on June 23, 1988, of the Paris
Convention which was revised at Stockholm in 1967, effective on January 1,
1989, and remains a member of the same convention (Exhibit Otsu 5), and [2]on January 1, 1995, became a member state of the World Trade Organization,and remains as such (Exhibit Otsu 6).
B Malaysia notified Japan through the International Bureau of the WorldIntellectual Property Organization concerning the public signs or hallmarks
indicating control and warranty by Malaysia, and on September 26, 2014, theMinister of Economy, Trade and Industry designated and publicly notified thesigns or hallmarks indicating control or warranty by Malaysia, as indicated in
Attachment 2-1 and notified by Malaysia, as the designated goods or designatedservices of Attachment 2 (Public Notice of the Ministry of Economy, Trade andIndustry No. 196 of 2014).
(3) A Elements of the Trademark are as described in Attachment 1-1 and are
identical to the elements, as indicated in Attachment 1-2, designated by the
Minister of Economy, Trade and Industry as signs and hallmarks indicating
control and warranty by Malaysia, as indicated in Attachment 1-2.
B The designated goods or designated services of the Trademark are as indicatedin Attachment 1-2, and are identical or similar to the goods or services for which
the signs or hallmarks indicating control or warranty by the Malaysian
government designated by the Minister of Economy, Trade and Industry are used,3

as per Attachment 1-2, with regard to the goods of "Meat.
game.

Meat extracts.

Jellies.

Jams.

fats for food.

Fish.

Poultry and

Preserved, dried, and cooked fruits and vegetables.

Compotes.

Eggs.

Milk and other milk products.

Processed marine products.

Rice.

Carbonated water and other non-alcoholic beverages.

Soybeans.

Oils and

Mineral water.

Fruit beverages and fruit

juices."(4) Then, even if the Plaintiff is a corporation, "which is a governmental organ basedon the laws of Malaysia and has authority to dispose of and to manage property"(Exhibit Otsu 1), the Trademark is a trademark which is identical to those
designated by the Minister of Economy, Trade and Industry among the signs orhallmarks indicating control or warranty by the governments of the union
countries of the Paris Convention and member countries of the World Trade
Organization and is used for goods which are identical or similar to the goods
for which the signs or hallmarks are used and thus, it falls under Article 4,paragraph (1), item (v) of the Trademark Act.
2. As described above in 1 (1), the Plaintiff asserted that, on the premise of theprovisions (Article 29(1)(c)), in the case of a difference in interpretation of the Paris
Convention, French sentences shall be used, "à défaut d'autorisation des pouvoirs
compétents," (without authorization by the competent authorities) in Article 6 3(1)(a) of the Paris Convention should be construed to relate not only to ", par desmesures appropriées," (to prohibit by appropriate measures) but also to "de refuserou d'invalider l'enregistrement et d'interdire," (to refuse or to invalidate theregistration), and the official translation of the provisions is erroneous translation,
and Article 4, paragraph (1), item (v) of the Trademark Act based on that does not
perform the enforcement obligation of the domestic laws in Article 6 -3(1)(a) of theParis Convention.
However, the phrase "à défaut d'autorisation des pouvoirs compétents," (withoutauthorization by the competent authorities), as pointed out by the Plaintiff, isinserted as an adverbial phrase connected with "l'utilisation," by "," in the original,
and the wording can be grammatically read such that "à défaut d'autorisation despouvoirs compétents," qualifies only "d'interdire ... l'utilisation" (to prohibit use)
and also as it qualifies "de refuser ou d'invalider l'enregistrement et d'interdire," (torefuse or to invalidate the registration) and from the drafting process in which thewording "without authorization by the competent authorities" was drafted to quality
only the "d'interdire ... l'utilisation" at the beginning but it was rewritten to theoriginal described above in the proposed convention presented by the Drafting4Committee to the General Meeting and was finalized as it is, whereby two ways ofgrammatical construction were made possible, as pointed out in Written Opinion[A].

As such, it cannot be determined that "à défaut d'autorisation des pouvoirs

compétents," is erroneous translation of Article 6-3(1)(a) of the Paris Convention
even on the premise that "à défaut d'autorisation des pouvoirs compétents," qualifies
only "d'interdire ... l'utilisation" as in the official translation in Japanese.
Moreover, even if the construction as pointed out by the Plaintiff; that is, theconstruction that the registration as trademarks or as elements of trademarks ofarmorial bearings and the like of the countries of the Union "without authorizationby the competent authorities" is refused or invalidated is adopted, the provisions do
not prescribe how to handle the registration application with "authorization by thecompetent authorities" (it cannot be interpreted that, as the opposite construction to"to refuse or to invalidate the registration as trademarks or as elements oftrademarks" of these armorial bearings, the allied nations are obliged by theConvention to naturally register the case other than the above) and thus, our country
shall not bear the obligation not to refuse the registration application "wit hauthorization by the competent authorities" on the basis of the Article above or shallnot be interpreted to grant "the registration" by narrowing the application range of
Article 4, paragraph (1), item (v) of the Trademark Act on the grounds of the Arti cle
above.
3. Even when various other arguments made by the Plaintiff are closely examined,
there are no grounds to support the obligation to grant registration when competentauthorities or a person authorized by the competent authorities file an application
for registration of a sign or hallmark indicating control and warranty as stipulated
in Article 6-3(1)(a) of the Paris Convention.

Accordingly, it must be said that thePlaintiff's argument that is made on the grounds of default under the same Article
is unreasonable in any case.
4. In view of the above, there is no need to determine other matters, and the cause forrescission as asserted by the Plaintiff is groundless, and the Plaintiff's appeal shallbe dismissed.
Therefore, the court renders a judgment as per the main text.
Intellectual Property High Court, Fourth Division
Presiding judge: KANNO Masayuki
Judge: NAKAMURA Kyo
5

Judge: OKAYAMA Tadahiro

6

Attachment 1
1. The Trademark

2. Designated goods (after the Amendment)
Class 29 "Meat; Fish; Not live poultry; Not live game; Meat extracts;
Charcuterie; Crystallized ginger; Processed vegetables and processed fruit; Jellies forfood; Meat jellies; Fruit jelly; Jams; Compotes; Eggs; Milk products; Edible fats;
Crackers made of fried, thinly-sliced fish-meat pastes; Edible seafood (except live fishand shellfish); Processed marine products; Desiccated coconut; Coconut butter;
Coconut milk; Coconut milk-based beverages; Coconut-based foodstuffs; Dried red
pepper; Fish-meat pastes; Meat pastes; Pastes made from not live game; Vegetablebased pastes; Nut-based pastes; Soybeans; Preserved soybeans"7Attachment 2
1. Designation of signs or hallmarks indicating control and warranty by Malaysia

Black

White

2. Goods and services for which the sign or hallmark is used
Transport.

Packaging and storage of goods.

materials.

Scientific and technological services as well as research and design

relating thereto.

Industrial analysis and research.

computer hardware and software.
drink.

Arrangement of travel. Treatment ofLegal services.

Temporary accommodation.

Design and development ofServices for providing food andMedical services.

Hygienic and beauty care for human beings or animals.
and forestry services.

Fertilizers.

and soldering preparations.
Tanning substances.
Flavorings.

Colorants.

Fire extinguishing compositions.

Lubricants.

Tempering

Chemical substances for preserving foodstuffs.

Carbon.

Gas.

Acids.

Food additives.

Bleaching preparations and other

Cleaning, polishing, scouring, and abrasive preparations.

Perfumery, perfumes, cosmetics, hair lotions.

and greases.

Unprocessed artificial resins,

Adhesives for industrial purposes.

substances for laundry use.
Soaps.

Agriculture, horticulture,

Chemicals for use in industry, science, and photography, as

well as in agriculture, horticulture, and forestry.
unprocessed plastics.

Veterinary services.

Dentifrices.

Industrial oils

Dust absorbing, wetting, and binding compositions.

Fuels (including fuels for motors and engines) and illuminants.
Pharmaceuticals, and veterinary preparations.

Candles and wicks.

Sanitary preparations for medical

purposes.

Dietetic food and substances adapted for medical or veterinary use, foodfor babies.

Plasters, materials for dressings.
8

Paste fillers for teeth, dental wax.

Disinfectants.

Preparations for destroying vermin.

Health products.

Dietary supplements, antiseptics.

Fungicides.

Herbicides.

Babies' bottles and pacifiers.

Surgical, medical, dental, and veterinary apparatus and instruments, and artificial
limbs, eyes, and teeth.

Orthopedic articles.

Suture materials.

Paper andcardboard, and goods that are made of those materials and do not belong to otherclasses.

Printed matters.

Photographs.

stationery or household purposes.

Stationery.

Artists' materials (stationery).

Typewriters and office requisites (except furniture).
apparatus).

Adhesives [glues] for
Paintbrushes.

Teaching materials (except

Plastic products for packing (except those belonging to other classes).

Playing cards.

Letters (type).

Printing blocks.

Rubber, gutta-percha, gum,asbestos, mica, and goods that are made of those materials and do not belong to otherclasses.

Extruded plastics for use in manufacturing.

stopping, and insulating.

Flexible hoses, not of metal.

Materials for stuffing,

Leather and artificial leather

as well as goods that are made of those materials and do not belong to other classes.
Animal skins.

Trunks and traveling bags.

Whips, harness traces, and saddlery.

Tools and containers for household or kitchenuse (not made of or plated with metal).
paint brushes).
cleaning.

Umbrellas, parasols, and walking stick s.

Combs and sponges.

Material for brush-making.

Brushes (other than

Cleaning apparatus.

Unworked or semi-worked glass, except building glass.

porcelain, and ceramic products that do not belong to other classes.
hats.

Steel wool for

Meat.

Fish.

Poultry and game.

cooked fruits and vegetables.
milk products.
products.

Jellies.

Meat extracts.

Jams.

Oils and fats for food.

Compotes.

Crackers.

Chili.

cocoa, sugar, rice, tapioca, sago, and coffee substitutes.
Bread.

Pastries (dough) and confectionery.

Molasses.

Yeast.

Baking powder.

Spices.

Ice.

Food flavorings.

Preserved, dried, andEggs.

Milk and other

Paste.

Mustard.
Biscuits.

Edible ices.

Honey.

Vinegar.

SaucesSoybeans and products

made from soybeans.

Chocolate and chocolate-based products.

Ginger.

Noodles.

Asian flatsedge.

Food additives.

Coffee, tea,

Foodstuffs made from flourand grains.
(condiments).

Clothing, shoes,

Seafood and processed marine

Coconut and coconut-based foodstuffs.

Salt.

Glassware,

Turmeric.

Products from agriculture,horticulture, and forestry, and grains that do not belong to other classes.
animals.

Fresh fruit and vegetables.

Fodder.

Malt.

Live

Seeds, and plants and flowers from nature.

Mineral water, carbonated water, and other non-alcoholic beverages.

Fruit juice beverages and fruit juices.

Syrups and other preparations for making

beverages.

9