Date
April 17, 2018
Court Intellectual Property High Court,First Division
Case Number 2017(Gyo-Ke)10078- A case in which the court held, based on the premise that "other person", asstipulated in Article 4, paragraph(1), items(x), (xv), and (xix) of the Trademark Act,applies when said other person is different from the person whose source is shown ina trademark, and the premise that "other person," as stipulated in Article 4,paragraph(1), item(viii) of the same Act, applies when said other person is different
from the person who is shown in a trademark, that in the present case, the "otherperson" as claimed by the plaintiff cannot be acknowledged as being different fromthe person whose source is shown in the Trademark.
References: Article 4, paragraph(1), items(viii), (x), (xv), and (xix) of the Trademark
Act
Number of related rights, etc.: Trademark Registration No. 5714462, Invalidation Trial
No. 2016-890023
Summary of the Judgment
The defendant (individual) was granted registration for a trademark consisting of
the standard characters, "戸田派武甲流薙刀術 (Toda-ha Buko-ryu Naginatajutsu)"(hereinafter referred to as the "Trademark"). The plaintiff (individual) filed a demand
for trial for invalidation of the Trademark by claiming that the registration of theTrademark falls under Article 4, paragraph(1), items(viii), (x), (xv), and (xix) of theTrademark Act, but the JPO rendered a decision not to complete the demand for trial.
In the present case, the plaintiff requested for revocation of the above the JPO decision.
The court rendered a judgment to the effect that the above the JPO decision isappropriate as per the conclusion, and dismissed, with prejudice, the plaintiffs claim
as described below.
(1) For purposes of preventing confusion as to the source of goods or services, andof protecting a trademark from having its source-identifying function diluted, among
other purposes, Article 4, paragraph(1), items(x), (xv), and (xix) of the Trademark Act
provide for trademarks for which registration cannot be granted. In that case, it isappropriate to understand that "other person," as stipulated in the above items of
Article 4, paragraph(1), is different from the person whose source is shown in the
trademark concerned. This is because, if the person whose source is shown in the
trademark concerned is the same as the "other person," then even if such trademark isused, there is no room for said use to create confusion as to the source or to cause thesource-identifying function to be diluted.
Furthermore, for the purpose of protection of moral interests, according to whichino individual or corporation or any other group shall have its name or the like used in a
trademark without the consent of said individual or the like, Article 4, paragraph(1),item(viii) of the Trademark Act provides for trademarks for which registration cannot
be granted. Given that use of the name or the like of "other person" is considered a
problem under Article 4, paragraph(1), item(viii), it is natural to understand theexistence of the premise that said other person is different from the person who isshown in a trademark.
(2) It is acknowledged that, at the time of filing of the application for registration of
the Trademark and at the time of the decision for registration, what the Trademark
showed as the source is one of the schools of classical martial arts, or Toda-ha Bukoryu Naginatajutsu (hereinafter referred to as the "School") itself, and that both theplaintiff and the defendant belong to this school. Since the Trademark, according to theway it is written, causes traders and consumers to conjure images of the School, it isacknowledged that how consumers recognize the Trademark, based on how theTrademark is written objectively, is congruent with the person of the source, based on
the details leading to the filing of the application for registration.
Meanwhile, of the reasons for invalidation, as claimed by the plaintiff in the trial,the "other person" as claimed by the plaintiff in connection with Article 4,paragraph(1), item(viii) of the Trademark Act is the School itself because it is "anassociation which has had a head as the representative since 1935 if not earlier, andwhich teaches, among other activities, the art of naginata (Japanese halberd) under thename of 'Toda-ha Buko-ryu Naginatajutsu'." The trademark of "other person," asclaimed by the plaintiff in connection with Article 4, paragraph(1), item(x) of theTrademark Act, is "a trademark which is widely recognized among consumers as
indicating services, including the teaching of 'Toda-ha Buko-ryu Naginatajutsu'," or a
trademark which indicates the School as the source. The "other person," as claimed by
the plaintiff in connection with Article 4, paragraph(1), item(xv), is described as "theSchool in which the plaintiff serves as the deputy head," but in fact, the plaintiff's
claim can be interpreted as such that said "other person" is not restricted to the School,in the sense of the School in which the plaintiff serves as the deputy head, but that itmeans the School, in the sense of the School which has taught "Toda-ha Buko-ryu
Naginatajutsu," among other activities, with a head as the representative, since 1935 if
not earlier. The "other person" as claimed by the plaintiff in connection with Article 4,paragraph(1), item(xix) is the School itself because the School is "'Toda-ha Buko-ryu
Naginatajutsu,' which is famous among consumers."ii

As described above, the "other person" according to Article 4, paragraph(1),items(viii), (x), (xv), and (xix) of the Trademark Act, as claimed by the plaintiff asreasons for invalidation, refers to the School, and since the Trademark also indicatesthe School itself as the source, it can be said that the "other person" and the School are
the same. In that case, since it cannot be acknowledged that the "other person" asclaimed by the plaintiff in connection with the above items of Article 4, paragraph(1)is different from the person whose source is shown in the Trademark, the court cannot
acknowledge, based on Article 4, paragraph(1), items(viii), (x), (xv), and (xix) of theTrademark Act, that the Trademark is a trademark for which registration cannot be
granted, and thus it must be said that the plaintiff's claims are groundless.

iii

Judgment rendered on April 17, 20182017 (Gyo-Ke) 10078 The case of seeking rescission of JPO decision
Date of conclusion of oral argument: March 20, 2018
Judgment
Plaintiff:
X
Defendant:

Y

Main Text
1
2

The plaintiff's claim is dismissed.
The plaintiff shall bear the court costs.
Facts and ReasonsNo. 1 Judicial decision sought by the plaintiff
The court shall rescind the decision made by the JPO on March 9, 2017, withregard to the case seeking invalidation of patent No. 2016-890023.
No. 2 Outline of the case
The present case is an action for cancellation of the trial decision of invalidation
rendered in a demand for invalidation of a trademark registration. The case concerns
the issue of whether or not there is error in the judgment of applicability concerning
Article 4, paragraph(1), item(viii), (x), (xv), and (xix) of the Trademark Act.
1

The Trademark and details of procedures taken at JPO, etc.

(1) The defendant is the holder of the trademark right for the following trademark(hereinafter referred to as the "Trademark") (Exhibits Ko 1, Ko 95, and Ko 96).
Registration number: 5714462
Trademark configuration: 戸田派武甲流薙刀術 (Toda-ha Buko-ryu Naginatajutsu)(standard characters)
Filing date: January 22, 2014
Date of decision for registration: October 31, 2014
Designated services: Class 41 "Conducting martial arts classes; Arranging, conducting,or holding seminars on martial arts; Arranging, conducting, or holding martial arts
conventions; Provision of teaching facilities for martial arts; Production of broadcast
programs on martial arts; Production of videos on education, culture, entertainment,1and sports of martial arts (other than such videos for use in films, broadcast, andadvertising)"(2) On March 24, 2016, the plaintiff filed a demand for trial for invalidation of
trademark registration to the JPO by claiming that the registration of the Trademark
falls under Article 4, paragraph(1), item(viii), (x), (xv), and (xix) of the Trademark Act
and should therefore be invalidated pursuant to the provisions of Article 46,
paragraph(1), item(i) of the same Act (Invalidation Trial No. 2016-890023).
On March 9, 2017, the JPO rendered a trial decision to the effect that the "plaintiff's
claims are groundless," and a copy of the decision was sent to the plaintiff on the 21stof the same month.
2

Gist of reasons for the trial decision(1) Reasons for invalidationA

Use of " 戸 田 派 武 甲 流 薙 刀 術 (Toda-ha Buko-ryu Naginatajutsu)" andacquisition of publicity
戸 田 派 武 甲 流 薙 刀 術 (Toda-ha Buko-ryu Naginatajutsu) (hereinaftersometimes referred to as the "School") is one of the schools of naginata(Japanese halberd), having been passed down since the Sengoku period. By
1935, if not earlier, the name, "戸田派武甲流薙刀術 (Toda-ha Buko-ryu
Naginatajutsu)," was also used in publications and the like. During the Showa
period, the School participated annually in Nihon Kobudo Taikai, and as the
School's activities were reported by media, the name became known
nationwide by the early Showa period, if not earlier.
Accordingly, it is evident that, at least by the time when the application forregistration of the Trademark was filed, the name, "戸田派武甲流薙刀術(Toda-ha Buko-ryu Naginatajutsu)," was widely known among consumers,
who are interested in martial arts and classical martial arts, as representing
services such as the teaching of martial arts and the arranging, conducting, or
holding martial arts conventions.

B

Violation of Article 4, paragraph(1), item(viii) of the Trademark Act
Ever since 1935, if not earlier, the School has had a head as the representative
and taught the art of naginata (Japanese halberd) under the name, "戸田派武甲流薙刀術 (Toda-ha Buko-ryu Naginatajutsu)," among other activities, thereby
2engaging in its own social activities as an association. As such, the School falls
under an association that lacks the legal capacity to hold rights, and thus the"name of other person" under Article 4, paragraph(1), item(viii) of theTrademark Act is applicable.
Accordingly, the Trademark is the same as, and includes, the name, "戸田派武甲流薙刀術 (Toda-ha Buko-ryu Naginatajutsu)," and thus the Trademark falls
under Article 4, paragraph(1), item(viii) of the Trademark Act.
C

Violation of Article 4, paragraph(1), item(x) of the Trademark Act
The Trademark is widely known among consumers as representing services
such as the teaching of " 戸 田 派 武 甲 流 薙 刀 術 (Toda-ha Buko-ryu
Naginatajutsu)," and since the Trademark is used for said services, theTrademark falls under Article 4, paragraph(1), item(x) of the Trademark Act.

D

Violation of Article 4, paragraph(1), item(xv) of the Trademark Act
The defendant used to be a disciple of the School. As such, if the defendantuses the Trademark for services such as the teaching of martial arts and thearranging, conducting, or holding martial arts conventions, there is a high riskof causing the misunderstanding that said services are the same as the teachingof the art of naginata (Japanese halberd) and other such services being provided
by the School, in which the plaintiff serves as the deputy head.
Accordingly, the Trademark falls under Article 4, paragraph(1), item(xv) of theTrademark Act.

E

Violation of Article 4, paragraph(1), item(xix) of the Trademark Act
When A, who is the former head of the School (hereinafter referred to as"Former Head"), passed away on August 29, 2012, the defendant tried toillicitly use the publicity gained by the name, "戸田派武甲流薙刀術 (Toda-ha
Buko-ryu Naginatajutsu)," which was famous among consumers, and tried tomonopolize the publicity at the Buyokan, which the defendant operates, forexample by registering himself as the representative of the School and filing theapplication for registration of the Trademark without the prior consent of theplaintiff, in spite of the fact that only three years had passed since the defendantjoined the School, the fact that the plaintiff is the representative whom theFormer Head entrusted with the position of the head, and the fact that the3defendant was aware that he did not have the qualification necessary forbecoming the head, by taking advantage of the fact that the School cannot beregistered in organizations such as the Japan Kobudo Promotion Society if therepresentative of the School was not changed from the plaintiff, who is aforeign national. It is evident that the defendant had "unfair purposes" as
stipulated in Article 4, paragraph(1), item(xix).
Accordingly, the Trademark falls under Article 4, paragraph(1), item(xix) of
the Trademark Act.
(2) Gist of reasons for the trial decisionA

The Toda-ha Buko-ryu Naginatajutsu

Evidence and claims indicate the findings shown below.
(A) Toda-ha Buko-ryu Naginatajutsu (the School) teaches a heavily-armed martial art
which developed by Seigen Toda, who was a vassal of the Asakura family of
Echizen Fukui Province during the Sengoku period. The School was called "Toda
School" in the beginning, but as the School moved to the Kanto area in Japan, it
came to be called "Toda-ha Buko-ryu."
The School has been a member of the Japan Kobudo Promotion Society (founded
in 1935; hereinafter simply referred to as the "Promotion Society") since thefoundation of the Promotion Society. Between 1935 and 2012, the Schoolparticipated in Kobudo Kata Hono Taikai (classical martial arts ceremonialconvention of forms), which is organized by the Promotion Society, and Nihon
Kobudo Taikai (Japanese classical martial arts conventions), which is held at Meiji
Shrine, and between 1993 and 2010, the School participated in Nihon Kobudo
Enbu Taikai, which is organized by the Japanese Classical Martial Arts Association(hereinafter simply referred to as "Association"), and furthermore, the School has
participated in demonstration tournaments which were held nationwide as well as
in ceremonies at shrines and the like.
Up until the death of Former Head, the Former Head was named as therepresentative of the School in the notices submitted to the Promotion Society andthe Association, and both external and internal activities were conducted under his
instructions.
(B) The plaintiff and the defendant are both disciples of the School. By aroundFebruary 2002, if not earlier, the plaintiff, who is a foreign national, was in the4position of a grand master, whereas the defendant joined the School around 2009.
In November 2011, the Former Head became ill and was hospitalized for surgery.
B

Defendant's registration procedures at Promotion Society, etc.

The plaintiff claims as follows: For the period from the training until appointment of ahead who is Japanese, the Former Head had entrusted the plaintiff with the training of
disciples as well as with the entire operations of the School as the deputy head, andthus, until the time when the plaintiff would appoint the next head, the plaintiff was therepresentative of the School, both externally and internally, and also had the power tomake final decisions, but the defendant named himself as the head of the School andcarried out registration procedures at the Promotion Society and the like despite
acknowledging that the plaintiff is in the position of the deputy head and withoutobtaining the prior consent of the plaintiff, who is authorized to decide the next head.
The plaintiff's claims above shall be considered.
(A) The court acknowledges the following. In November 2011, the Former Head told
the plaintiff about the conditions of the Former Head's illness and about future
prospects, among other matters, and requested the plaintiff to fill in for the head of
the Buko-ryu if anything happened to the Former Head, and in the event that aJapanese disciple who is suitable to succeed the School should appear as a result of
training, to let that disciple succeed the School as the next head, upon consultations
with the direct disciples of the head prior to the Former Head. After making said
request, the Former Head appointed the plaintiff as the deputy head of the School,
and the Former Head requested the defendant to be in charge of preparing external
documents and of running the School's Buyukan Dojo as its director. Thereafter, inJuly and August 2012, the Former Head left a will in the presence of his wife, theplaintiff, and the defendant, among others, and passed away on August 29, 2012
without appointing the next head.
(B) The court acknowledges the following. It seems that the defendant prompted thePromotion Society to register the plaintiff as the school representative of the
School, and that the defendant and the Promotion Society advised the plaintiff toobtain Japanese nationality, but this plan fell through since the plaintiff firmly
refused to obtain Japanese nationality.

Furthermore, since the Promotion Society

and the Association hinted at the possibility of dismissal of the School if it fails to
appoint a school representative who is Japanese, the defendant submitted to thePromotion Society a notice of change to the school representative in March 20135

by indicating the defendant as the school representative because, if the School
were dismissed from the aforementioned organizations, then the School would
probably be no longer able to participate in Kobudo Taikai and other conventions
in which the School had continued to participate over the years, and said notice
was accepted. Also, in April 2013, the defendant submitted a notice of change tothe school representative to the Association as well, and on June 2, 2014, theAssociation registered the wife of the Former Head as the deputy representative
and the defendant as an associate member, and subsequently, the School was able
to continuously participate in conventions such as Kobudo Taikai, which isorganized by the Promotion Society.
(C) In light of the above, namely that the Former Head appointed the plaintiff as thedeputy head, entrusted the plaintiff with the training of a Japanese disciple who
would become the next head, and entrusted the plaintiff with the succession of thenext head upon consultations with the direct disciples of the head prior to theFormer Head, it cannot be understood immediately that the plaintiff is therepresentative of the School both externally and internally, and that the plaintiff isauthorized to make final decisions on the operations of the School.
While appointing the plaintiff as the deputy head, the Former Head entrusted thedefendant with the responsibility of writing documents and with the operation of
the School's Odawara Buyukan Dojo as its director. As such, it should beunderstood that the Former Head requested both the plaintiff and the defendant tohandle the operation and management of the School, among other matters, after thedeath of the Former Head.
In that case, it should be said that a series of activities by the defendant, which
includes the defendant nominating the plaintiff as the representative of the School
to the Promotion Society and the Association at one time, the school representativeof the Association and the Promotion Society being restricted to a person withJapanese nationality, the plaintiff firmly refusing the acquisition of Japanesenationality, the plan to make the plaintiff the representative of the School
subsequently falling through, the Promotion Society and the Association, withwhich the School had carried out most activities, hinting that the School may bedismissed if a school representative of Japanese nationality is not appointed, andthe defendant subsequently submitting to the Association and the Promotion
Society a notice indicating the defendant as the school representative, werenecessary responses for maintaining memberships at the two organizations, where6most of the School's activities take place.
C

Reasons for invalidation of the Trademark

The School is the name of one of the schools of classical martial arts, which has
carried out most of its activities with the Promotion Society and the Association. The
defendant had been entrusted, jointly with the plaintiff, by the Former Head with theoperation and management of the School, among other matters, after the death of theFormer Head, and in view that the Promotion Society and the Association had placed
the restriction that the school representative must be a person with Japanese nationality,
it cannot be said that the defendant's act of taking the procedure concerning school
representative with the purpose of maintaining memberships at the Promotion Society
and the Association was based on unfair purposes.
Furthermore, after the defendant was accepted by the Executive Committee of thePromotion Society as the school representative of Toda-ha Buko-ryu Naginatajutsu,
the defendant participated in Kobudo Taikai and other such conventions as therepresentative of the School, and various newspapers and magazines mentioned thedefendant as the representative of the School. In light of these circumstances, it cannot
be said that the defendant falls under "other person" as stipulated in Article 4,paragraph(1), item(viii), (x), (xv), and (xix) of the Trademark Act in terms of its
relationship with the School at the time of the filing of the application for registrationof the Trademark and at the time of the decision for registration.
Accordingly, it is needless to consider other requirements set forth in Article 4,paragraph(1), item(viii), (x), (xv), and (xix) of the Trademark Act, and thus theTrademark does not fall under these items.
(3) Conclusion
As described above, it cannot be said that the registration of the Trademark was inviolation of Article 4, paragraph(1), item(viii), (x), (xv), or (xix) of the Trademark Act,and thus the registration shall not be invalidated pursuant to Article 46, paragraph(1) of
the same Act.
(omitted)
No. 5 Court decision
1

Findings
7

Evidences (Exhibits Ko 2, Ko 9 to Ko 62, Ko 64 to 67, Ko 79, Ko 82, Ko 84, Ko
85, Ko 88 to Ko 90, Ko 103, Ko 108 to Ko 111, Ko 113, Ko 115, Ko 118 to Ko
121, Ko 129 to Ko 131, Ko 134 to Ko 136, Ko 138 to Ko 144, including branchnumbers; the same applies hereinafter) and the entire import of the oral
argument support the findings shown below.
(1) About the School, Toda-ha Buko-ryu Naginatajutsu
The School teaches a heavily-armed martial art which was developed bySeigen Toda, who was a vassal of the Asakura family of Echizen Fukui
Province during the Sengoku period. The School was called "Toda School" inthe beginning, but as the School moved to the Kanto area in Japan, it came tobe called "Toda-ha Buko-ryu" (Exhibits Ko 64 to 67, Ko 140).
The School has been a member of the Promotion Society (founded in 1935)
since its foundation. Between 1935 and 2012, the School participated inconventions organized by the Promotion Society and in demonstration
tournaments at a shrine and the like (Exhibits Ko 9 to Ko 62).
The Former Head of the School became the head of the School in 2008. Up
until his death, the Former Head was named as the representative of the
School in the notices sent to the Promotion Society and the Association, andboth external and internal activities were conducted under the instructions of
the Former Head (Exhibits Ko 58 to Ko 61).
(2) Details prior to death of Former HeadA

The plaintiff and the defendant are both disciples of the School.
The plaintiff, who is a foreign national (Denmark), was in the positionof a grand master by around February 2002, if not earlier (Exhibit Ko50). The defendant joined the School around 2009.

B

The Former Head was hospitalized for surgery in November 2011. On
the 20th of the same month, the Former Head told the plaintiff, by email, about the conditions of the illness of the Former Head and about
future prospects, among other matters, and requested the plaintiff tofill in for the head of the Buko-ryu if anything happened to the Former
Head, and in the event that a Japanese disciple who is suitable tosucceed the School would appear as a result of training, to let thatdisciple succeed the School as the next head, upon consultations with8

the direct disciples of the head prior to the Former Head (Exhibits Ko
79 and Ko 85).
C

In May 2012, the Former Head told his disciples, including thedefendant, at the School's Nakano Dojo, that the next head would be a
Japanese, and that the plaintiff had been appointed as the deputy head.

D

The Former Head issued to the defendant a written document dated
July 16, 2012, sealed and signed, indicating that "the responsibility forwriting documents under the name of Toda-ha Buko-ryu Naginatajutsu/ and the running of Buyokan Odawara Dojo / shall be entrusted to Y. /Please work diligently" (the slashes indicate the start of new lines; thesame applies hereinafter) (Exhibit Ko 108).

E

In August 2012, at a hospital where he was hospitalized, the Former
Head issued to the plaintiff a written document dated May 23, 2012,
sealed and signed, indicating that "the post of the deputy head / ofToda-ha Buko-ryu Naginatajutsu / shall be entrusted to X" (Exhibit Ko
2).

F

A detailed error report dated May 1, 2014 (Exhibit Ko 84) which thedefendant submitted to the Association states that, on July 7, 2012, at a
hospital where the Former Head was hospitalized, his wife, theplaintiff, the defendant, and two other witnesses were present when theFormer Head left a will which indicated as follows: (i) The head of the
School shall be a Japanese; (ii) The head of the School shall continue
to be a member of classical martial arts organizations (the Associationand the Promotion Society) and shall broadly exchange with othermembers; (iii) The plaintiff shall, as the deputy head, provide
instructions on the skills of naginata (Japanese halberd) and train ahead who is Japanese; and (iv) The defendant shall be in charge ofpreparing external documents and the like in addition to running the
School's Buyukan Dojo as its director, and shall take actions which
contribute to the succession of the School's tradition, such as gatheringof historical records.

9

G

The Former Head passed away on August 29, 2012 (Exhibit Ko 103).
The Former Head did not appoint the next head of the School.

(3) Details leading to the submission of a notice of representative to thePromotion Society and the AssociationA

After the death of the Former Head, the defendant took actions toregister the plaintiff as the school representative of the School bysuggesting to the Promotion Society about making the plaintiff therepresentative. On December 22, 2012, the defendant was given the
explanation concerning the next representative (head) of the School tothe effect that, in order to be registered as the school representative,
the representative must have Japanese nationality (including
naturalized Japanese citizens). At that time, a plan in which theplaintiff would acquire Japanese nationality to become the next
representative (head) surfaced for consideration, but since the plaintiff
firmly refused to acquire Japanese nationality, the plan fell through(Exhibits Ko 82 and Ko 120).

B

The Promotion Society and the Association hinted to the defendantthat they could not accept the registration of a non-Japanese as theschool head of the School, and that in the event that no school
representative who is Japanese is appointed, the School may risk being
dismissed from the organizations.

C

The defendant received the "Toda-ha Buko-ryu Naginatajutsu
Mokuroku" (a full license indicating mastery of the school's teachings)(Exhibit Ko 110) and a naginata (Japanese halberd) (Exhibit Ko 109)
from the wife of the Former Head. In addition, on March 13, 2013, thedefendant submitted a notice of change to the school representative,
indicating the defendant himself as the school representative of the
School, to the Promotion Society, and the notice was accepted(Exhibits Ko 111, Ko 118 to 120).

D

On April 15, 2013, the defendant submitted to the Association a noticeof change to the school representative, indicating the defendanthimself as the school representative (Exhibit Ko 113). On June 2, 2014,10

the Association registered the wife of the Former Head as the deputy
representative with the understanding that that she will, as the deputy
head, appoint the head of the School who is Japanese (Exhibit Ko 121).
(4) Activities by the defendant
The defendant provided teaching of the School, among other activities(Exhibits Ko 129, Ko 130, and Ko 134), participated in demonstration
tournaments organized by the Promotion Society (Exhibit Ko 131), and evenafter the decision for registration of the Trademark, participated in Kobudo
Taikai and the like as the representative of the School (Exhibits Ko 135, Ko
136, and Ko 138 to 143).
(5) Activities by the plaintiff
Even after the death of the Former Head, the plaintiff continued to provide
instructions to disciples at the School's Nakano Dojo and attended
conventions, among other activities (Exhibits Ko 88 to 90, Ko 144).
On December 20, 2013, the plaintiff sent a notice to the defendant indicatingthat the plaintiff, as the deputy head, excommunicates the defendant from the
School (Exhibit Ko 115).
2

Grounds for rescission (error in judgment of applicability of Article 4,paragraph(1), item(viii), (x), (xv), and (xix) of the Trademark Act)
(1) Article 4, paragraph(1), item(viii), (x), (xv), and (xix) of the Trademark Act
Article 4, paragraph(1), item(x), (xv), and (xix) of the Trademark Act (hereinaftercollectively referred to as "Relevant Provisions") provide for trademarks, forwhich registration cannot be granted, with the purpose of preventing confusion as
to the source of goods or services or of protecting the source-identifying function
from being diluted, among other purposes. In such case, it is appropriate tounderstand that the "other person" as stipulated in the Relevant Provisions is adifferent person from the person whose source is shown by said trademark. This isbecause, if the person whose source is shown by said trademark is the same as the"other person," then there is no room, even when such trademark is used, for said
use to create confusion as to the source or to cause dilution of the sourceidentifying function.
Article 4, paragraph(1), item(viii) of the Trademark Act provides for trademarks,11for which registration cannot be granted, with the purpose of protecting moral
rights by stipulating that the name or the like of an individual or judicial person or
any other group shall be used in a trademark without the consent personally given
by said individual, judicial person, or any other group (Supreme Court Judgmentof Third Petty Bench dated June 8, 2004/Civil Case Record, vol. 214, page 373;
Supreme Court Judgment of Second Petty Bench dated July 22, 2005/Civil Case
Record, vol. 217, page 595). Given that use of the name or the like of "otherperson" is considered a problem under Article 4, paragraph(1), item(viii), it isnaturally understood as a prerequisite that said person and the person who isshown in the trademark are different.
(2) The Trademark, etc.
According to the findings indicated above and the details leading to the filing of
the application for registration of the Trademark, what the Trademark shows as
the source, at the time of the filing of the application for registration and at thetime of the decision for registration, is the School itself, which is one of theschools of classical martial arts, and it is acknowledged that the plaintiff and thedefendant belong to the School (the fact that the plaintiff sent to the defendant a
notice to excommunicate the defendant from the School does not influence theabove finding).
Since the Trademark, by the way it is written, conjures images of the School(Toda-ha Buko-ryu Naginatajutsu) to traders and consumers, it is acknowledgedthat how consumers recognize the Trademark based on the objective writing of
the mark is congruent with the person whose source is identified based on factors
such as the details leading to the filing of the application for registration.
Meanwhile, of the reasons for invalidation as claimed by the plaintiff in a trial, the"other person" as claimed in connection with Article 4, paragraph(1), item(viii) of
the Trademark Act refers to an "association which carries out, among other things,
the teaching of classical martial arts under the name, ‘Toda-ha Buko-ryu
Naginatajutsu,’ ever since 1935, if not earlier, with the head acting as therepresentative." As such, it refers to the School itself. The trademark of "otherperson" as claimed in connection with Article 4, paragraph(1), item(x) is a
"trademark which is widely recognized among consumers as indicating services
such as the teaching of classical martial arts under the name, ‘Toda-ha Buko-ryu
Naginatajutsu,’ or the trademark the source of which is the School." The "otherperson" as claimed in connection with Article 4, paragraph(1), item(xv) is12

described as "the School in which the plaintiff serves as the deputy head." In fact,
however, the plaintiff's claim can be interpreted as such that said "other person" is
not restricted to the School, in the sense of the School in which the plaintiff serves
as the deputy head, but that it means the School, in the sense of the School which
has taught "Toda-ha Buko-ryu Naginatajutsu," among other activities, with a headas the representative, since 1935 if not earlier. The "other person" as claimed inconnection with Article 4, paragraph(1), item(xix) is "'Toda-ha Buko-ryu
Naginatajutsu', which is famous among consumers," and thus it refers to the
School itself.
As described above, while the "other person" under Article 4, paragraph(1),item(viii), (x), (xv), and (xix) of the Trademark Act as claimed by the plaintiff asreasons for invalidation all refer to the Trademark, what the Trademark shows as
its source is also the School itself, and thus it can be said that the two marks are
the same. In that case, since it cannot be acknowledged that the "other person" asclaimed by the plaintiff in connection with the above items is different from theperson whose source is shown by the Trademark, it cannot be acknowledged, as
per the above (1) and pursuant to Article 4, paragraph(1), item(viii), (x), (xv), and(xix) of the Trademark Act, that the Trademark is a trademark for which
registration cannot be granted, and thus it must be said that the plaintiff's claims
are groundless.
In this regard, the trial decision held as follows: It cannot be said that the action
by the defendant, who was requested to handle the operation and management andthe like of the School jointly with the plaintiff, of taking the procedures
concerning school representative, is unlawful, and in light of circumstances suchas that the defendant, who, after having been accepted by the Executive
Committee of the Promotion Society, participated in Kobudo Taikai and the likeas the School's representative and that the defendant is mentioned in various
newspapers and magazines as the School's representative, it cannot be said thatthe defendant falls under "other person" as stipulated in Article 4, paragraph(1),item(viii), (x), (xv), and (xix) of the Trademark Act in terms of its relationshipwith the School at the time of the filing of the application for the Trademark andat the time of the decision for registration.
However, as described above, the Trademark shows as its source one of theschools of classical martial arts, or the School itself. As such, whether or not thedefendant, as an individual, falls under the above "other person" in terms of therelationship between the Trademark and the School does not immediately
13

influence the judgment of applicability under Article 4, paragraph(1), item(viii),(x), (xv), and (xix) of the Trademark Act (the plaintiff's claim can be interpreted
as such that there are reasons for invalidation of the Trademark, for which
registration has been granted to the defendant, in terms of the relationshipbetween the Trademark and the School, which is "other person").
Accordingly, it must be said that the fact that, in the trial decision, the judgmentof applicability of Article 4, paragraph(1), item(viii), (x), (xv), and (xix) of theTrademark Act was rendered based on the reason that the defendant as anindividual does not fall under the above "other person" in terms of its relationshipwith the School, without taking into consideration the source and the like of theTrademark, was erroneous. However, it can be said that the judgment in the trial
decision to the effect that Article 4, paragraph(1), item(viii), (x), (xv), and (xix) of
the Trademark Act do not apply to the Trademark was not erroneous as per theconclusion.
(3) Claims by the plaintiff
Claims by the plaintiff include the following: Without the consent of the plaintiff,
who is in the position of the deputy head of the School and has the authority to
decide the next head, the defendant called himself the head of the School and tookregistration procedures at the Promotion Society and the like, attended
demonstration tournaments, and filed the application for registration of theTrademark without consulting the plaintiff about the matter.
However, as described above, the Trademark shows, as the person of the source,
one of the schools of classical martial arts, or the School, which is the same as theorganization which the plaintiff claims is other person. As such, matters such as
the details leading to the filing of the application for the Trademark and whether
or not the representative of the School is the plaintiff do not influence the above
judgment of applicability of Article 4, paragraph(1), item(viii), (x), (xv), and (xix)of the Trademark Act, which the plaintiff claims constitute reasons forinvalidation of the Trademark.
Accordingly, the plaintiff's claims, as above, cannot be accepted.
3

Summary

As described above, there is no need to determine the remaining matters, and there isno error in the trial decision to the effect that Article 4, paragraph(1), item(viii), (x),14

(xv), and (xix) of the Trademark Act do not apply to the Trademark. As such, thereason for cancellation, as claimed by the plaintiff, is groundless.
No. 6

Conclusion

Therefore, the plaintiffs' claims shall be dismissed as there is no reason,and the Judgment renders as in the form of the main text.
Intellectual Property High Court, First Division
Presiding judge

SHIMIZU Misao

Judges NAKASHIMA Motoyuki and OKADA Shingo cannot affix their seals andsignatures hereon due to change of posts.
Presiding judge

SHIMIZU Misao

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