Trademark Date
Right
Case number

September 7, 2023
2023 (Gyo-Ke) 10030

Court

Intellectual Property
High Court, Second
Division- A case in which the court held that a trademark consisting of the characters, "くるんっと前髪カーラー (kuruntto maegami kahrah)", written in standard characters, withthe designated goods of "Hair curlers [non-electric]", falls under a trademark listed in
Article 3, paragraph (1), item (iii) of the Trademark Act.
Case type: Rescission of Trial Decision to Maintain
Result: Granted
References: Article 3, paragraph (1), item (iii) of the Trademark Act
Related rights, etc.: Trademark Registration No. 6399042
Decision of JPO: Invalidation Trial No. 2022-890041
Summary of the Judgment
1

Defendant is the holder of a trademark consisting of the characters, "くるんっと前髪カーラー", written in standard characters, with the designated goods of"Hair ornaments; Hair curlers [non-electric]" in Class 26 (hereinafter referred to as"Trademark").

Plaintiff argued that, in regards to "Hair curlers [non-electric]"(hereinafter referred to as "Goods") from among the above designated goods, theTrademark falls under a trademark listed in Article 3, paragraph (1), item (iii) or (vi)of the Trademark Act, or Article 4, paragraph (1), item (xvi) of the same Act, andfiled a request for a trial for invalidation of registration of the Trademark for theGoods.

In response, the JPO rejected Plaintiff's above argument entirely andrendered the decision not to approve the request.

The present case is one in which

Plaintiff demanded rescission of the JPO's decision.
2

In the judgment of the present case, the court determined that the Trademark

for the Goods falls under a trademark listed in Article 3, paragraph (1), item (iii) of
the Trademark Act, as described below, and rescinded the JPO's decision.
(1)

Composition of the Trademark

The characters making up the Trademark are of the same size and font, and thesecharacters are laid out evenly in a single horizontal line, in a unified manner.

Assuch, it is understood that the Trademark, with all the characters that make up theTrademark, shows an integral phrase.

Upon determining the applicability of theTrademark to Article 3, paragraph (1), item (iii) of the Trademark Act, it is necessary
to consider, in addition to the meaning of each of the words making up such integral
phrase, and in light of the actual circumstances of the transaction, whether said
integral phrase is generally recognizable by traders and consumers as indicating theiquality, efficacy, intended purpose, and other features of goods (refer to the judgment
rendered by the Supreme Court, First Petty Bench on January 23, 1986 (1985 (GyoTsu) No. 68); Civil Cases No. 147, page 7).
(2)

Recognition by traders and consumers coming in contact with theTrademark
As of the day of the decision of registration pertaining to the Tradem ark(hereinafter referred to as "Day of Decision"), according to a Japanese-language
dictionary that is considered to be highly credible in Japan, each of the words "前髪(maegami)" and "カーラー (kahrah)" has the meaning, respectively, of "hair that
falls over one's forehead" and a "cylindrical tool used for curling hair by wrapping thehair around it".

Meanwhile, according to the entire import of oral argument, it isacknowledged that, as of the Day of Decision, the fact that each of the words had suchmeaning was quite clear to the traders or consumers for the Goods (the traders or
consumers for the Goods as of the Day of Decision are hereinafter referred to as"Consumers, etc.").
On the other hand, in light of the meaning and usage of the word " くるん(kurun)"according to the dictionary, and examples of use of words such as "くるんと" [Translator's note: It is read as "kurunto" and means a state of something being
curled.] on websites and in newspaper articles prior to the Day of Decision, as well as
the Japanese language grammar, the word "くるん" when used for bangs and otherparts of hair, usually indicates a "state of (hair) having a rounded curve".

In addition,in light of examples of use of words such as "くるんと" on websites, it cannot be
acknowledged that the word "くるんと" and the word "くるんっと" [Translator's
note: It is read as "kuruntto" and means a state of something being curled.], havemeanings that are different from one another due to the presence of a choked sound.
In that case, the subject of the word "くるんっと" that is positioned immediately
preceding the word "前髪", from among the constituent parts of the Trademark, isobvious even if there is no clear indication of a declinable word (verb, adjective, etc.)
which, as an adverb, it should modify.

As such, it is reasonable to acknowledge thatthe word "くるんっと" is ordinarily recognized by Consumers, etc. as an indicationof a "state of (bangs) having a rounded curve".
Based on the above, even when taking into consideration the fact that, as of the
Day of Decision, there is no evidence to sufficiently acknowledge that there areexamples of use of the phrase "くるんっと前髪カーラー" or an equivalent phrase
for the Goods, other than Defendant's goods (bearing the Trademark) and Plaintiff's
goods (with the product name of "前髪くるんとカーラー",) it is reasonable toiiacknowledge that Consumers, etc. coming in contact with the phrase "くるんっと前
髪カーラー" will ordinarily recognize said phrase as referring to a "curler for givinga rounded curve to bangs".
(3)

Applicability of the Trademark to Article 3, paragraph (1), item (iii) of theTrademark Act
As described above in (2), Consumers, etc. coming in contact with the phrase "くるんっと前髪カーラー" will recognize said phrase as referring to a "curler forgiving a rounded curve to bangs".

Meanwhile, given that a "curler" is a "cylindrical

tool for wrapping hair around it to create curls", the phrase "くるんっと前髪カーラー" is merely a description of the efficacy, etc. of the Goods.

In addition, theTrademark consists solely of the phrase "くるんっと前髪カーラー" and shows saidphrase in standard characters in a commonly used manner (it cannot be said that an
expression using the word "くるんっと", which is made up of the word "くるんと"and a choked sound added thereto, is special).

Accordingly, since it can be said that

the Trademark is a trademark consisting solely of a mark which indicates the quality
and efficacy, etc. of the Goods in a commonly used manner, the Trademark falls
under a trademark listed in Article 3, paragraph (1), item (iii) of the Trademark Act.
It should be noted that, given that "くるんっと前髪カーラー" is a mark whichindicates the quality and efficacy, etc. of the Goods in a commonly used manner as
referring to a "curler for giving a rounded curve to bangs", it is naturally assumed that
other business operators, upon engaging in manufacture and sale, etc. of goods, whichfall under the Goods, would try to use the same or similar mark as "くるんっと前髪カーラー".

Accordingly, the court cannot accept Defendant's argument that there isno adverse effect to granting exclusive use for the mark of "くるんっと前髪カーラ
ー".

iii

Rendition of judgment on September 7, 2023
2023 (Gyo-Ke) 10030 Case of seeking rescission of JPO decision
Date of conclusion of oral argument: July 13, 2023
Judgment
Plaintiff: Shobido Corporation
Defendant: NOBLE co., LTD.
Main text
1. The decision made by the JPO concerning Invalidation Trial No. 2022-890041 on
February 14, 2023 shall be rescinded.
2. Defendant shall bear the court costs.
Facts and reasonsNo. 1 ClaimsSame as the first paragraph of the main text.
No. 2 Background
The present case is a suit against the JPO's decision not to approve a request fora trial for invalidation of trademark registration.

Issues are [1] whether or not theregistered trademark, indicated below as 1 (hereinafter referred to as "Trademark"),
falls under a trademark listed in Article 3, paragraph (1), item (iii) of the Trademark
Act, [2] whether or not the Trademark falls under a trademark listed in Article 3,
paragraph (1), item (vi) of the same Act, and [3] whether or not the Trademark falls
under a trademark listed in Article 4, paragraph (1), item (xvi) of the same Act.
1. Registered Trademark
Defendant is the holder of the following registered trademark (Trademark)(Exhibits Ko 1-1 and 1-2; hereinafter the trademark registration for the Trademark is
referred to as "Trademark Registration").
(1) Registration No.: Trademark Registration No. 6399042(2) Date of decision of registration: May 24, 2021 (hereinafter referred to as "Day ofDecision")(3) Registration date: June 7, 2021
(4) Composition of trademark: " く る ん っ と 前 髪 カ ー ラ ー (kuruntto maegami
kahrah)" (standard characters)1(5) Classification of goods and services, and designated goods
Class 26 "Head ornaments; Hair curlers [non-electric]" (from among theforegoing, "Hair curlers [non-electric]" in Class 26 are hereinafter referred to as"Goods")2. History of procedures at JPO
On June 2, 2022, Plaintiff filed a request for a trial for invalidating theTrademark Registration for the Goods, and the JPO examined the case as Invalidation
No. 2022-890041 (the parties agree on this point).
On February 14, 2023, the JPO made a decision that "the present request for a
trial is groundless" (hereinafter referred to as "Decision"), and a copy of the decision
was sent to Plaintiff on the 27th of the same month (entire import of oral argument).
On March 27, 2023, Plaintiff filed the present lawsuit seeking rescission of the
JPO's Decision.
3. Summary of JPO's Decision(1) Applicability of Article 3, paragraph (1), item (iii) of the Trademark Act
A.

The Trademark is made up of the characters, "くるんっと前髪カーラー",
written in standard characters.

The constituent characters of the Trademark

have the same size and font, and these characters are laid out evenly in a single
horizontal line, in a unified manner.

As such, the entirety of the constituent

characters represents an integral phrase.
Constituent characters of the Trademark consist of the characters "くるん(kurun)", which constitute an onomatopoeic expression for a "state of being
bouncy and lightly curled" (Exhibit Ko 8), the characters "前髪 (maegami)",having the meaning of a "a bundle of hair above the forehead of a man or
woman" (Exhibit Ko 11), and the characters "カーラー (kahrah)", having themeaning of a "tool for wrapping hair around it to create curls" (Exhibit Ko 12),joined together using a choked sound of "っ (ttsu)" and a case particle of "と(to)" and the like.

Meanwhile, in terms of the entirety of constituent

characters, there are not sufficient words to identify the meaning as an idiom
or sentence.

As such, even if a vague meaning that corresponds to themeaning of each character can be evoked, it is difficult to immediately
recognize or understand the specific meaning, and thus the constituent
characters lack specificity as a quality labeling for goods.
B. It is understandable that in beauty-related magazine articles and otherinformation found online, the onomatopoeic expression of "くるんっ", whichshows a state of hair being curled, is used, for example, in the following cases:2

"Add a curl to your bangs and you will be more popular!" (Exhibit Ko 13 -1);
"Sandwich your hair and give it a curl for ideal bangs" (Exhibit Ko 13-3);"How to style your not-long-enough bangs beautifully by giving them arounded curve" (Exhibit Ko 13-5).

However, there cannot be found any facts

showing that a sentence that consists of character composition like theTrademark is generally adopted or used in business as an idiomatic expressionthat indicates the specific quality, etc. of goods.
C. As described above, since the Trademark is not a specific indication of thequality of goods in relation to the Goods, the Trademark does not fall under
Article 3, paragraph (1), item (iii) of the Trademark Act.
(2) Applicability of Article 3, paragraph (1), item (vi) of the Trademark Act
As described above in (1) A, the Trademark shows an integral phrase with all
the constituent characters, and even if a vague meaning that corresponds to themeaning of each character can be evoked, it is difficult to immediately recognize
or understand the specific meaning as well.
Furthermore, as described above in (1) B, there cannot be found any facts
showing that a sentence that consists of character composition like the Trademark
is generally adopted or used in business as an idiomatic expression that indicatesthe specific quality, etc. of goods.
Accordingly, since it cannot be said the Trademark can be recognized byconsumers as pertaining to a person's business, the Trademark does not fall under
Article 3, paragraph (1), item (vi) of the Trademark Act.
(3) Applicability of Article 4, paragraph (1), item (xvi) of the Trademark Act
As described above in (1) A, the Trademark shows an integral phrase with theentirety of constituent characters, and even if a vague meaning that corresponds tothe meaning of each character can be evoked, it is difficult to immediately
recognize or understand a specific meaning as well.
In addition, from among the composition of the Trademark, the character part "カーラー" at the end of the phrase is a word that has the meaning of a "tool forwrapping hair around it to create curls" (Exhibit Ko 12), and corresponds to theGoods.
Accordingly, the Trademark is, in relation to the Goods, not a trademark thathas a risk of causing misunderstanding as to the quality of goods, and does not fallunder Article 4, paragraph (1), item (xvi) of the Trademark Act.
(4) Conclusion
Based on what is described above, the Trademark Registration is not in3

violation of Article 3, paragraph (1), item (iii) or (vi) of the Trademark Act, or
Article 4, paragraph (1), item (xvi) of the Trademark Act, so that it cannot be
invalidated pursuant to the provisions of Article 46, paragraph (1), item (i) of thesame Act.
(omitted)
No. 5 Judgment of this court
1. Rescission Reason 1 (Erroneous determination as to applicability of Article 3,
paragraph (1), item (iii) of the Trademark Act)
(1) Composition of the Trademark
The Trademark consists of the characters, "くるんっと前髪カーラー",
written in standard characters.

As such, the characters making up theTrademark are naturally of the same size and font, and these characters are laidout evenly in a single horizontal line, in a unified manner.

Accordingly, it isunderstood that the Trademark, with all the characters that make up theTrademark, shows an integral phrase.

Upon determining the applicability of

the Trademark to Article 3, paragraph (1), item (iii) of the Trademark Act, it isnecessary to consider, in addition to the meaning of each of the words making
up such integral phrase, and in light of the actual circumstances of thetransaction, whether said integral phrase is generally recognizable by tradersand consumers as indicating the quality, efficacy, intended purpose, and otherfeatures of goods (refer to Supreme Court Judgment of 1986).
(2) Recognition by traders and consumers coming in contact with the Trademark
A. Description in a dictionary(A)

According to Exhibit Ko 8 ("Giongo/Gitaigo 4500 Nihongo
Onomatopoeic Jiten"; edited by Masahiro Ono and published in 2007),
the word "くるん" is defined as a "state of turning around in a bouncy
manner, or a state of being lightly curled".

An example of use

indicated therein reads: "Many people, regardless of age, consider ideal
eyelashes to be those of a Barbie doll, which has 'eyelashes that are
curled with a rounded curve'".

In addition, according to Exhibit Ko 10("Kurashino Kotoba Gion/Gitai Jiten"; edited by Nakami Yamaguchi
and published in 2003), the word "くるん" is defined as a "state inwhich an object, which becomes bouncy with the help of the force thatis initially applied, lightly makes a full rotation or a half rotation".
4Anexample of use indicated there reads: "I made a half rotation along withmy car".
(B)

According to Exhibit Ko 11 ("Kojien, The 7th Edition"; edited by
Izuru Shinmura and published in 2018), the word "前髪" is defined as"hair that falls over one's forehead", among others.

(C)

According to Exhibit Ko 12 ("Kojien, The 7th Edition"; edited by
Izuru Shinmura and published in 2018), the word "カーラー" is defined
as a "cylindrical tool used for curling hair by wrapping the hair aroundit".

B. Examples of use found on websites (Due to the nature of their use as
evidence below, only those that are acknowledged as being posted before
May 24, 2021 are listed herein although there are other examples of use per
se.)
(A)

Exhibit Ko 13-2 (posted in 2019) shows the following indication
under the title of "[How to style bangs] Easy and curly bangs": "In thisvideo, I am going to show you how to curl bangs.

This time, withlongish bangs, I will show you a style that looks a little more femininewith the tip of the hair rounded into a curve".
(B)

Exhibit Ko 13-5 (posted in 2017) reads: "How to style your notlong-enough bangs beautifully by giving it a rounded curve.

For manyof you who want to curl your hair beautifully but who seem to find it
difficult to find a balance when the curl is too strong".
(C)

Exhibit Ko 13-6 (posted in 2018) indicates "Miss Cafe-Au-Lait
Troop with their charming curly bangs and cheeks" above a picture of
persons having rounded bangs.

(D)

Exhibit Ko 13-7 (posted in 2016) reads: "Mega change into a
lovable girl with curly cute <<heart-shaped bangs>> ... Create an
upside-down heart shape by curling bangs inward ... The point is withcurly bangs ... Simply curling the bangs will increase loveliness".

(E)

Exhibit Ko 13-16 (posted in 2015) reads: "My naturally curly haircauses my bangs to make a rounded curve ... Is there a way to make therounded curve go away while at the same time treating the damage tobangs? ... Please tell me a way to prevent bangs from being curled".

(F)

Exhibit Ko 13-18 (posted in 2011) reads: "I hate how my bangs
have a wavy curl, and I want only the bangs to be straightened withperm, but if possible, I would rather do nothing like that, yet make my5bangs as straight as possible".
(G)

Exhibit Ko 13-19 (posted in 2012) reads: "I have naturally curlybangs and they always curl up.

(H)

How can I fix it?"Exhibit Ko 13-20 (posted in 2013) reads: "I want to try giving arounded curve to the bangs and sweep the bangs to the side, but it wasdevastatingly unflattering.

Since then I keep my bangs AKB style inspite of my age".
(I)

Exhibit Ko 13-21 (posted in 2017) indicates, under the title "Howto make bangs curly!", "This time, I made a video of how to makebangs curly ... It is perfectly okay to use a hair iron, but since I found it
easy to burn myself with it, I, Rikariko, use a straightening iron ... If
you have other requests about hair arrangement and how to curl hair,contact me on twitter".

(J)

Exhibit Ko 13-25 (posted in 2020) reads: "Curly eyelashes likethose of a doll! ... Now you can make doll-like eyelashes that last
long!!"(K)

Exhibit Ko 24 (posted in 2018) indicates "The curler for bangs
should be as slim as to enable you to wrap the hair approximately 1.5
times in order to create a curly finish".

(L)

Exhibit Ko 25 (posted in 2017) reads: "Curly ... Curly bangs are
girls' favorite and a dream" underneath a photograph of a wig withbangs that have a rounded curve.

(M)

Exhibit Ko 26 (posted in 2018) reads: "USB-type curler for bangs

is a curler, which you can purchase at a hundred yen store and the like,equipped with a USB port!

Using only a charger for smartphones, PC,

and a mobile battery, the curler can be heated in 2 to 3 minutes, and you
can simply sandwich your hair for several seconds to create a rounded
curve."(N)

Exhibit Otsu 4-1 (posted in 2020) indicates, as an introduction of
the method of use of Defendant's Product, "It gives a rounded curve tothe hair".

(O)

Exhibit Otsu 4-2 (posted in 2018) indicates, as a review of
Defendant's Product, "Simply sandwiching the hair and giving it arounded curve holds the hair firmly and keeps it up.

It is easy to carryand convenient, and I find it very useful".
(P)

Exhibit Otsu 8-3 (posted in 2020) explains Defendant's Product as
6

follows: "Gives hair a natural curl".
(Q)

Exhibit Otsu 8-5 (posted in 2020) explains Defendant's Product asfollows: "Airy bangs ... You will feel lighter when the bangs have aperfect curl ... You sandwich the hair and give it a rounded curvethrough super easy steps for an ideal style" and "I love it, too, because
this requires no work or skill but creates a nice curly style for bangs!"(R)

Exhibit Otsu 9-6 (posted in 2020) explains Defendant's Product asfollows: "Simply sandwich the hair and give it a curl ... It is a wonder
how bangs can be curled so easily at a low cost but look proper andnice".

(S)

Exhibit Otsu 10-2 (posted in 2020) explains Defendant's Productas follows: "By using a curler for bangs, you can create curly and cutebangs in four steps!"

C. Examples of use in newspaper articles(A)

Exhibit Ko 13-8 (posted in 2013) reads: "Since I believe I strongly
carry an image of having long hair with bangs that are curled, I wanted
to change my looks completely so that I can draw the viewers into thework".

(B)

Exhibit Ko 13-9 (posted in 2010) reads: "While in elementary
school, I really liked the cartoon 'Candy Candy' in which the main
character, like in the original manga, has long curly hair tied together
above the ears.

I curled my straight hair with my mother's curler andmade painful efforts to be Candy.

However, the bangs which I cut

myself did not curl in the middle to make a rounded curve but instead
bounced to a wrong direction".
(C)

Exhibit Ko 13-10 (article in 2008) reads: "In Tokara goats ... males
are characterized by their curled bangs".

(D)

Exhibit Ko 13-11 (article in 1998) reads: "With her bangs that are
curled with a rounded curve and her wavy long hair billowing in thewind like Medusa, a bus tour guide in a green suit and pumps leads
customers for a tentative view of the cliff".

(E)

Exhibit Ko 13-12 (posted in 1991) reads: "A friend who went to aconcert to take standing room furiously exclaimed, 'A woman in frontof me had a crest up on her head and I could not see a thing!'

A crestis a hairstyle for young girls who leave half of the bangs falling over theforehead and curl the other half into a rounded curve to keep it
7

upright ... You can style it by curling the hair with a curler and fixing itwith mousse".
D. Consideration
As described above in A (B) and (C), as of the Day of Decision,
the words "bangs" and "curler" are both indicated in a Japanese language
dictionary that is acknowledged to be highly credible in Japan as having themeanings of the above A (B) and (C).

Meanwhile, according to the entire

import of oral argument, as of the Day of Decision, it is acknowledged as
being quite clear that traders or consumers for the Goods (the traders or
customers for the Goods as of the Day of Decision are hereinafter referred
to as "Consumers, etc.") knew that these words have such meanings (uponconsidering the awareness of Consumers, etc. coming in contact with theTrademark, the words "bangs" and "curler" are used directly instead ofusing explanatory expressions like "hair that falls over one's forehead" anda "cylindrical tool used for curling hair by wrapping the hair around it" andthe like.)On the other hand, in light of the meaning and usage of the word "くるん" according to the dictionary (above A (A)), and examples of use ofwords such as "くるんと" (above B and C) on websites and in newspaper
articles prior to the Day of Decision, as well as the Japanese language
grammar, the word "くるんと" when used for bangs and other parts of hair,usually indicates a "state of (hair) having a rounded curve".

In addition,in light of the examples of use of words such as "くるんと" on websites(above B), it cannot be acknowledged that the word "くるんと" and theword "くるんっと", have meanings that are different from one another due
to the presence of a choked sound.

In that case, the subject of the word "く る ん っ と ", from among the constituent parts of the Trademark,positioned immediately preceding the word "前髪", is obvious even if there
is no clear indication of a declinable word (verb, adjective, etc.) which, as
an adverb, should modify " 前 髪 ".

As such, it is reasonable toacknowledge that the word " くるんっと " is ordinarily recognized by
Consumers, etc. as an indication of a "state of (bangs) having a rounded
curve".
It should be noted that some of the examples of use of words suchas "くるんと" on websites are acknowledged as using words such as "くるんと" as an adverb that indicates the manner of movement of rolling a8

curler, which is a product, rather than to indicate a state of the hair having arounded curve ([i] "It gives a rounded curve to the hair (above B (N))"); [ii]"Sandwiching the hair and giving it a rounded curve" (above B (O)); [iii]"Give it a rounded curve through super easy steps for an ideal style "(above B (Q)); [iv] "Simply sandwich the hair and give it a curve (above B(R))").

However, if the word "くるんっと" from among the compositionof the Trademark is used to indicate a manner of movement of rolling acurler, said word merely expresses a natural movement made by a personusing a curler, so that in regard to its applicability to Article 3, paragraph(1), item (iii) of the Trademark Act, the use is merely an indication of an
intended purpose or method of use of goods in an ordinary manner, and theresult of use of a curler by said movement is a state of the bangs having arounded curve, so that there is no difference to the subject of recognition,
as described above, by Consumers, etc. coming in contact with theTrademark (the recognition that the word "くるんっと" indicates a state of
the bangs having a rounded curve).
Based on the above, even when taking into consideration the fact
that, as of the Day of Decision, there is no evidence to sufficiently
acknowledge that there are examples of use of the phrase "くるんっと前
髪カーラー" or an equivalent phrase for the Goods, other than Defendant's
goods (Exhibits Ko 14, 15-1, and 15-2, and Exhibits Ko 42 and 44) and
Plaintiff's goods with the product name of " 前髪く るんとカ ー ラー "(Exhibit Otsu 2), it is reasonable to acknowledge that Consumers, etc.
coming in contact with the phrase " く る ん っ と 前 髪 カ ー ラ ー " willordinarily recognize said phrase as referring to a "curler for giving arounded curve to bangs".

According to evidence (Exhibits Ko 14, 15-1,

and 15-2, and Exhibits Ko 42 and 44) and the entire import of oral
argument, as of the Day of Decision, Defendant is acknowledged as using
the phrases of "This will help you create curly bangs!" and "We came up
with a curler for styling bangs by curling them inward", as an advertisingstatement for the quality and efficacy, etc. of Defendant's Goods.

This

coincides with the above finding that Consumers, etc. coming in contact
with the phrase "くるんっと前髪カーラー" would recognize the phrase as
referring to a "curler for creating bangs with a rounded curve" and the like.
E. Defendant's arguments
Defendant argues that while the word "くるんっと" from among9the composition of the Trademark is an adverb, the Trademark contains noverb, in the composition of the trademark, for clearly receiving the adverb,
so that it is impossible to unambiguously identify what is meant by theTrademark.
Indeed, the onomatopoeic expression of "くるんっと" is, in termsof grammar, considered an adverb that modifies a declinable word (verb,
adjective, etc.)

Nevertheless, each of the words "前髪" and "カーラー"

from among the composition of the Trademark is a noun, so that in thecomposition of the Trademark, there is no word which is modified by theword "くるんっと".

However, it cannot be said that Consumers, etc.

cannot unambiguously comprehend the meaning of the phrase, which
consists of the words "くるんっと", "前髪", and "カーラー" when they
are arranged in this order, unless the mutually modifying relationships of
the words are grammatically accurate.

In fact, examples of use of words

such as "くるんと" on websites include an example using the phrase "Howto make bangs curly!" (above B (I)), an example using the phrase "Curly"(above B (L)), and an example using the phrase "give it a rounded curve ...
for an ideal style" (above B (Q)), and an example using the phrase "Curly
bangs" (above B (R)).

None of these examples is grammatically correct,

but this does not suggest that the intended meaning is unclear.
Defendant argues that the phrase " くるんっと前髪カーラー "evokes various meanings, including: [i] "a curler for bangs whose 'surface
is bouncy with a rounded curve'", [ii] "a curler for bangs that stay curled'even when you turn around'''; [iii] "a curler that can curl bangs 'even when
you roll over on your side'"; and [iv] "a curler for sandwiching bangs and'turning it around'".
However, from the above, the meanings according to the above [i]to [iii] may be logically possible, but examples of use of theaforementioned websites and all other evidences submitted in the present
case suggest that the word "くるんっと" as used together with "前髪" and"カーラー" is acknowledged as mostly indicating the "state of (bangs)
having a rounded curve", and there is no example of use in the meaning
asserted by Defendant.

Furthermore, as for the meaning of the above [iv],while there are examples of use that generate such meaning (above B (N),(O), (Q), and (R)), when giving consideration to the explanation, said
existence is not sufficient to influence the decision made about the10

applicability to Article 3, paragraph (1), item (iii) of the Trademark Act.
In view of the above, Defendant's above arguments cannot be
accepted.
(3) Applicability of the Trademark to Article 3, paragraph (1), it em (iii) of theTrademark Act
As described above in (2), Customers, etc. coming in contact with the phrase"くるんっと前髪カーラー " will recognize said phrase as referring to a"curler for giving a rounded curve to bangs".

Meanwhile, given that a "カーラー" is a "tool for wrapping hair around it to create curls" (above (2) A (C)),
the phrase "くるんっと前髪カーラー" is merely a description of the efficacy,etc. of the Goods (Hair curlers [non-electric]).

In addition, the Trademark

consists solely of the phrase "くるんっと前髪カーラー" and shows saidphrase in standard characters in a commonly used manner (it cannot be said
that an expression using the word "くるんっと" which is made up of the word
"くるんと" and a choked sound added thereto, is special).

Accordingly,

since it can be said that the Trademark is a trademark consisting solely of amark which indicates the quality and efficacy, etc. of the Goods in a commonlyused manner, the Trademark falls under a trademark listed in Article 3,
paragraph (1), item (iii) of the Trademark Act.
Defendant argues that since it cannot be said that the Trademark directly andspecifically indicates the quality, etc. of the Goods, the Trademark does not
fall under a trademark listed in Article 3, paragraph (1), item (iii) of theTrademark Act.

However, in light of the explanation given above in (2), theTrademark does not merely directly imply the quality or efficacy, etc. of theGoods, but is acknowledged as directly and specifically indicating such feature,so that Defendant's argument cannot be accepted.
In addition, Defendant argues that granting exclusive use to a specificperson for the mark of "くるんっと前髪カーラー " does not cause any
adverse effect.

However, because "くるんっと前髪カーラー" is a markwhich has meanings such as a "curler for giving a rounded curve to bangs" andindicates the quality and efficacy, etc. of the Goods in a commonly usedmanner, it is naturally assumed that other business operators, upon engaging in
manufacture and sale, etc. of goods, which fall under the Goods, would try to
use the same or similar mark as "くるんっと前髪カーラー".

Accordingly,

the court cannot accept Defendant's argument that there is no adverse effect togranting exclusive use for the mark of "くるんっと前髪カーラー".
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(4) Summary
As described above, the Trademark falls under a trademark listed in Article
3, paragraph (1), item (iii) of the Trademark Act.

As such, the JPO's Decision

to the contrary is erroneous, and the Rescission Reason 1 has grounds.
2. Conclusion
In view of the above, Plaintiff's request has grounds and there is no need toconsider other reasons for rescission.
Intellectual Property High Court, Second Division
Presiding judge:

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SHIMIZU Hibiku

Judge:

ASAI Ken

Judge:KATSUMATA Kumiko