Trademark Date
Right
Case
numberDecember 15, 2021

Court

2020 (Gyo-Ke)
10100

Intellectual Property High
Court, Third Division- A case in which, with regard to an application for registration related to a registeredtrademark similar to a U.S. trademark, the court rescinded the JPO Decision that
rescinded the registration of the trademark with respect to the designated services
similar to the designated services for the U.S. trademark, on the ground that theapplication for registration of the trademark was filed by the former agent of a person
who has the right pertaining to the U.S. trademark, without the approval of the rightholder and without a just cause.
Case type: Rescission of Trial Decision of Rescission
Result: Granted
Reference: Article 53-2 of the Trademark Act
Related rights, etc.: Trademark Registration No. 5834594, Rescission Trial No. 2017300733
Summary of the Judgment
1. Basic facts (including facts found by the court)
The Defendant is a company located in the State of New Jersey, the U.S.A. The
Plaintiff is a special limited company and its director, Dr. A, is an obstetrics andgynecology doctor. In 2004, Dr. A and the Defendant executed a joint venture agreement
concerning a joint research and experimentation project for pre-implantation genetic
diagnosis (the "Original Agreement"), and an amendment thereto on March 10, 2008 (the"Amended Agreement").
Yugen Kaisha REPROGENETICS, which is a different company from the Plaintiff,
is a company incorporated on August 20, 2004, immediately after the execution of theOriginal Agreement, for the purpose of conducting the joint venture under that agreement.
Dr. A and the Defendant's representative at that time assumed the position of director ofthis company. On September 18, 2015, Yugen Kaisha REPROGENETICS filed an
application for registration of a trademark "Reprogenetics" (in standard characters)
designating the services in Class 42 "cell genetic testing" and Class 44 "genetic testingfor medical purpose; psychological testing and counselling for medical and healthservices" (the "Trademark"). For the Trademark, the establishment of the trademark right
was registered on March 18, 2016 (Trademark Registration No. 5834594). The trademark
right pertaining to the Trademark (the "Trademark Right") was transferred from YugeniKaisha REPROGENETICS to Dr. A's child, who is also an obstetrics and gynecology
doctor, on June 17, 2016 and then to the Plaintiff on June 20, 2017.
2. History of the JPO Decision
On September 26, 2017, the Defendant filed a request for a trial for rescission of
trademark registration for the Trademark pursuant to Article 53-2 of the Trademark Act.
A copy of the Amended Agreement was submitted as evidence for the trial, but a copy of
the Original Agreement was not submitted. On July 20, 2020, the Japan Patent Office(JPO) rendered a decision to rescind the registration of the Trademark in connection withits designated service, "all services" in Class 44, and determined the request for a trial tobe groundless with respect to all other designated services. The summary of the findingsof the JPO Decision are as follows: the designated service, "all services" in Class 44, isconsidered to be similar to the designated services of the Defendant's trademark in the
U.S., a country party to the Paris Convention; as between the Defendant and Dr. A, theDefendant retains all intellectual property rights under the Amended Agreement; Yugen
Kaisha REPROGENETICS, a company which is substantially deemed to be the same
party as Dr. A, filed the application for registration of the Trademark without the approvalof the Defendant; and the application for registration of the Trademark was filed without
the approval of a person who has the right pertaining to the trademark (i.e., the Defendant),
without a just cause.
In response to this, the Plaintiff filed this lawsuit to seek rescission of the JPO
Decision for the portion rescinding the registration of the Trademark in connection withits designated service, "all services" in Class 44.
3. Instruction of the judgment
In this lawsuit, a copy of the Original Agreement, in addition to that of the Amended
Agreement, was submitted as evidence. In this judgment, the court found as follows: as
there is room to understand that the Amended Agreement does not change the part of theOriginal Agreement providing the joint ownership of intellectual property rights, etc.
including trademarks by the Defendant and Dr. A in an equal proportion of 50%,
respectively, it cannot be affirmed that, under the series of agreements between the
Defendant and Dr. A, the Defendant is a sole owner of all rights with respect to intellectual
property rights including the Trademark Right; and therefore the finding of the JPO
Decision that the Defendant retains all intellectual property rights according to the seriesof agreements between the Defendant and Dr. A, without mentioning its interpretation
concerning the Amended Agreement in relation to the Original Agreement, was incorrect.
Based on the above findings, the court rendered a judgment that the JPO Decision should
be rescinded with respect to its portion rescinding the registration of the Trademark inii

connection with its designated service, "all services" in Class 44, and upheld the Plaintiff's
claim.

iii

Judgment rendered on December 15, 2021
2020 (Gyo-Ke) 10100, Case of seeking rescission of the JPO decision
Date of conclusion of oral argument: October 4, 2021
Judgment
Plaintiff: Yugen Kaisha Otani Medical Supply(omitted)
Defendant: Reprogenetics, LLC
Main text
1. With respect to a decision made by the Japan Patent Office (JPO) on July 20, 2020
concerning the case of Rescission Trial 2017-300733, the portion which reads "Theregistration of Trademark No. 5834594 shall be rescinded in connection with its
designated service, 'all services' in Class 44" shall be rescinded.
2. The Defendant shall bear the court costs.
3. An additional time frame for filing an appeal against this judgment and for submitting
a petition for acceptance of final appeal shall be 30 days.
Facts and reasonsNo. 1 Claim
Same as the main text.
No. 2 Outline of the case
1. Basic facts(1) The Defendant is a company located in the State of New Jersey, the U.S.A. (Exhibits
Ko 8 and 47).
(2) The Plaintiff is a special limited company incorporated on September 30, 1978 for the
purpose of conducting real property leasing and management business, food service andall incidental businesses, and its director is Dr. A (entire import of oral arguments). Yugen
Kaisha REPROGENETICS, which is a different company from the Plaintiff, is a special
limited company incorporated on August 20, 2004 for the purpose of conducting genetic
testing, medical and health counselling and all incidental businesses, and its directors are
Dr. A and a former representative of the Defendant, B (Exhibits Ko 8 and 47) (Exhibit Ko
9). Dr. A is an obstetrics and gynecology doctor who runs Otani Ladies Clinic. C is thechild of Dr. A and is also a medical doctor (Exhibits Ko 8, 10, 47, 51 and 52).
1

2. History of procedures at the JPO(1) The Plaintiff is a holder of a trademark right for the following trademark (hereinafter
this trademark is referred to as the "Trademark" and the trademark right pertaining to theTrademark is referred to as the "Trademark Right") (Exhibit Ko 1).
Registration Number: 5834594
Date of application for registration: September 18, 2015
Date of examiner's decision for registration: February 8, 2016
Date of registration of establishment: March 18, 2016
Registered trademark: "Reprogenetics" (in standard characters)
Class of goods and services: Class 42
Designated service: cell genetic testing
Class of goods and services: Class 44
Designated services: genetic testing for medical purpose; psychological testing andcounselling for medical and health services
The applicant and the right holder at the time of registration of establishment of theTrademark Right was Yugen Kaisha REPROGENETICS. The Trademark Right wastransferred to C on June 17, 2016, and then to the Plaintiff on June 20, 2017 (Exhibit Ko
1).
(2) The trademarks submitted by the Defendant in support of its ownership of right in the
trademarks in a country party to the Paris Convention, a member of the World Trade
Organization or a Contracting Party to the Trademark Law Treaty are as set out in
Attachment 1. (In the JPO Decision, Trademarks 1 through 11 mentioned in Attachment
1 were individually referred to as, for example, "Cited Trademark 1" according to its
number, and collectively as "Cited Trademarks." Accordingly, the same applies to thisjudgment.)(3) On September 26, 2017, the Defendant filed a request for a trial for rescission of
trademark registration of the Trademark pursuant to Article 53-2 of the Trademark Act.
The JPO examined the abovementioned case as Rescission Trial No. 2017-300733,
and on July 20, 2020, rendered its decision (the "JPO Decision") concluding as follows:"The registration of Trademark No. 5834594 is rescinded in connection with its
designated service, 'all services' in Class 44. With respect to all other designated services,
the request for a trial is groundless. The demandant and demandee shall bear the half ofthe cost of trial, respectively." The certified copy of the decision was served upon the
Plaintiff on July 30, 2020.
(4) On August 26, 2020, the Plaintiff filed this lawsuit to seek rescission of the JPO
Decision with respect to its portion, "The registration of Trademark No. 5834594 is2

rescinded in connection with its designated service, 'all services' in Class 44."
3. Summary of the reasons for the JPO Decision
The reasons for the JPO Decision are as stated in the written decision (copy). In
summary, the JPO determined as follows: [i] the Defendant is found to have been a holder
of a right pertaining to a trademark right (with respect to Cited Trademark 6) in the U.S.,
which is a country party to the Paris Convention, at the time of filing the application forregistration of the Trademark (JPO Decision No. 5-1(1)G.); [ii] it is appropriate todetermine that the Trademark and Cited Trademark 6 are similar (JPO Decision No. 51(2)C.); [iii] among the designated services of the Trademark, Class 44 "genetic testingfor medical purpose; psychological testing and counselling for medical and healthservices" are similar to the designated services of Cited Trademark 6 (JPO Decision No.
5-1(2)D.); [iv] it may well be considered that the applicant was in a position of an agentof the Defendant within one year prior to the filing date of the application for the
Trademark (JPO Decision No. 5-2(2)B.); and [v] the application for registration of theTrademark was filed without the approval of a person who has the right pertaining to thetrademark, without a just cause (JPO Decision No. 5-2(3)C.).
(omitted)
No. 4 Judgment of this court
1. Concerning Ground for Rescission 1 (an error in the finding as to "without absence of
the Defendant's approval") and Ground for Rescission 2 (an error in the finding as to"without a just cause")(1) Findings of the JPO Decision
The JPO Decision found as follows: "(B) the demandant and Dr. A executed anamendment to the joint venture agreement referred to in (A) above on March 10, 2008.
This amended agreement provides that the demandant shall retain ownership of any
intellectual property derived in whole or in part from its intellectual property in the joint
venture, but that Dr. A shall retain a perpetual, non-transferrable right to use suchintellectual property rights in Japan. (Exhibit Ko 8)" (JPO Decision No. 5-2(1)D.(B)) The
JPO continued: "A. As mentioned in (1)D.(B) above, the demandant retains all intellectual
property rights pursuant to the series of agreements with Dr. A, and, as mentioned inD.(D) above, the demandant notified Dr. A of the fact that Dr. A registered the trademark"Reprogenetics" although he did not have a right to file an application for this trademark.
In light of the above circumstances, the applicant, who is substantially the same party as
Dr. A, is determined to have filed the application for registration of the Trademark without3

the approval of the demandant." (JPO Decision No. 5-2(3)A.) The JPO concluded: "C. It
is found that the application for registration of the Trademark was filed without theapproval of a person who has the right pertaining to the trademark, without a just cause."(JPO Decision No. 5-2(3)C.)(2) Provisions of the agreements between the Defendant and Dr. A
The Original Agreement and Amended Agreement executed between the Defendantand Dr. A contained the following provisions (hereinafter, the translation submitted by the
Plaintiff is used):
A. Original Agreement(A) Execution of the Original Agreement
On July 11, 2004, the Defendant and Dr. A executed the JOINT VENTURE
AGREEMENT concerning a joint research and experimentation project for preimplantation genetic diagnosis (the "Original Agreement"; Exhibit Ko 47).
An amendment to the Original Agreement (the "Amended Agreement") mentions thatthe Defendant and Dr. A executed a joint venture agreement dated August 27, 2004
(Exhibit Ko 8); however, it is found that this is wrongly dated and the Original Agreement
was executed on July 11, 2004 (Exhibit Ko 47).
(B) Preface
The preface of the Original Agreement provides as follows:"WHEREAS, Reprogenetics and Dr. A desire to engage in a joint venture, the purposeof which is to perform certain agreed upon research and experimentation concerning PreImplantation Genetic Diagnosis ("PGD"), subject to the principles of cooperation and thecovenants and agreements contained herein; andWHEREAS, Dr. A desires to provide certain office space, equipment, staffing andreferrals of suitable patients and referring physicians in support of the joint venture upon
the terms and conditions hereinafter set forth; andWHEREAS, Reprogenetics desires to provide technical support, training andassistance, quality control and scientific direction, information and improvements insupport of the joint venture upon the terms and conditions hereinafter set forth;
NOW, THEREFORE, for good and valuable consideration, the receipt of which ishereby acknowledged, and intending to be legally bound hereby, the Parties agree asfollows:"(C) Governing law provisions
The governing law provisions of the Original Agreement, "XXII. CHOICE OF LAW
AND FORUM," provide as follows (Exhibit Ko 47): "This Agreement shall be governedby and construed in accordance with the laws of the State of New Jersey and the United4States of America."(D) Provisions concerning intellectual property rights, etc.
The Original Agreement provides as follows concerning the treatment of ownershipand other matters with respect to intellectual property rights (Exhibit Ko 47):
a. In "VI. OWNERSHIP; INCOME DISTRIBUTION; DECISION MAKING
AUTHORITY," Paragraph B provides: "Each party acknowledges and agrees that theProduct and Results, and all associated intellectual and other property rights, including
trademarks, all documentation and computer recorded data, all techniques, processes andother elements used in cultivating the Product and/or Results, and all proceeds of theMaterial or Product, are proprietary to both Parties jointly, in equal, undivided, 50%
shares, that may not be diminished or otherwise affected by either party's agreement toshare its portion or the proceeds thereof with any other person or entity." (It should be
noted that the term "shares" in "50% shares" as translated above is understood to mean
proportional shares, not company stocks.) Further, Paragraph D of the same section
provides: "The parties shall act in mutual agreement to protect and perfect their joint
intellectual property rights created, conceived or developed hereunder, and shall equally
bear the expenses of such procedures."b. "VII. PROPRIETARY RIGHTS" of the Original Agreement provides: "Each party
agrees that Reprogenetics and Dr. A are joint and equal owners of the Material and theProduct that are the subject of this Agreement and of any intellectual property rights
related to any internal research utilizing such Material or Product, regardless of the party
conducting such research."
B. Amended Agreement(A) Execution of the Amended Agreement
On March 10, 2008, the Defendant and Dr. A executed the AMENDED JOINTVENTURE AGREEMENT to amend the Original Agreement (Exhibit Ko 8).
(B) Preface
The preface of the Amended Agreement provides:"WHEREAS Reprogenetics is a specialized genetics laboratory engaged in thedevelopment of Preimplantation Genetic Diagnostics ("PGD") testing; andWHEREAS Dr. A is engaged in the operation of an in vitro fertilization clinic, theOtani Ladies Clinic, and a clinical genetics testing laboratory, Reprogenetics Japan; andWHEREAS since 2004 the parties have been engaged in a joint venture whereby Dr.
A has been utilizing PGD testing procedures and techniques developed and supplied by
Reprogenetics to Dr. A for use in his IVF clinic and his clinical testing laboratory; andWHEREAS the parties heretofore executed a Joint Venture Agreement ("20045

Agreement") dated August 27, 2004 in furtherance of this joint venture and havecontinuously operated this joint venture since that date; andWHEREAS the parties have now mutually agreed to amend the 2004 Agreement so
as to more accurately describe the nature and purpose of their joint venture and to ensure
its continued operation.
NOW, THEREFORE, for and in consideration of the promises and of the mutual
representations, covenants, agreements and conditions set forth herein, and for other goodand valuable consideration, the receipt of which is hereby acknowledged, the parties agree
as follows:"(Note, however, that as "a Joint Venture Agreement ('2004 Agreement') dated August27, 2004" mentioned in the abovementioned provisions refers to the Original Agreement,
it is found to be wrongly dated and "a Joint Venture Agreement ('2004 Agreement') dated
July 11, 2004" (Exhibit Ko 47) is correct.)(C) Governing law provisions
The governing law provisions of the Amended Agreement, "20. Choice of Law and
Forum" provide: "This Agreement shall be governed by and construed in accordance withthe laws of the State of New Jersey and the United States of America." (Exhibit Ko 8).
(According to the original text, this clause is understood to mean that the laws of the State
of New Jersey and the United States of America apply to this agreement and that theagreement shall be interpreted according to these laws.)(D) Provisions concerning intellectual property rights, etc.
The Amended Agreement provides as follows concerning the treatment of ownershipand other matters with respect to intellectual property rights (Exhibit Ko 8):
a. "7. Ownership and Proprietary Rights" of the Amended Agreement provides:"Paragraph A: Reprogenetics shall retain ownership of any intellectual property derived
in whole or in part from its intellectual property in the joint venture."b. "7. Ownership and Proprietary Rights" of the Amended Agreement provides:"Paragraph C: The parties shall act in mutual agreement to protect and perfect any joint
intellectual property rights created, conceived or developed as a result of this joint ventureand each party shall bear equally any expenses incurred as a result of such effort."
C. Second Amendment
The Defendant and Dr. A executed an agreement to further amend the Amended
Agreement on December 10, 2015 (Exhibit Ko 8).
(3) Interpretation of the agreements between the Defendant and Dr. A
A. Purpose of agreements
The court finds, from the preface of the Original Agreement ((2)A.(B) above), that6the Defendant and Dr. A executed the Original Agreement for the purpose of engaging ina joint venture for research and experimentation relating to pre-implantation genetic
diagnosis (PGD), and, from the preface of the Amended Agreement ((2)B.(B) above), thatthey executed the Amended Agreement to amend the Original Agreement.
B. Ownership of intellectual property rights(A) Original Agreement
Based on Paragraph B of "VI. OWNERSHIP; INCOME DISTRIBUTION;DECISION MAKING AUTHORITY" ((2)A.(D)a. above), it is found that all associatedintellectual and other property rights, including trademarks (hereinafter referred to as"intellectual property rights including trademarks") are to be jointly owned by the
Defendant and Dr. A in an equal proportion of 50%, respectively. The provisions ofParagraph D of the same section ((2)A.(D)a. above) presuppose the existence ofintellectual property rights jointly owned by the Defendant and Dr. A, and, in addition,"VII. PROPRIETARY RIGHTS" of the Original Agreement ((2)A.(D)b. above) provides
the joint ownership of the Defendant and Dr. A for any intellectual property rights relating
to research activity in joint venture under the Original Agreement. These provisions also
support the aforementioned interpretation of Paragraph B of "VI. OWNERSHIP;
INCOME DISTRIBUTION; DECISION MAKING AUTHORITY" of the Original
Agreement that any "intellectual property rights, etc. including trademarks" are to be
jointly owned by the Defendant and A.
(B) Amended Agreementa. As the Amended Agreement was executed for the purpose of amending the Original
Agreement (B. above), it follows that "intellectual property rights, etc. including
trademarks" under the Original Agreement are to be jointly owned by the Defendant andDr. A according to the Original Agreement, unless there are any provisions to change theirownership from the Original Agreement.
b. Among the wording "Reprogenetics shall retain ownership of any intellectual property
derived in whole or in part from its intellectual property in the joint venture" of Paragraph
A of "7. Ownership and Proprietary Rights" of the Amended Agreement ((2)B.(D)a.
above), there is room to understand that the phrase "intellectual property in the joint
venture" includes "intellectual property rights, etc. including trademarks" provided in
Paragraph B of "VI. OWNERSHIP; INCOME DISTRIBUTION; DECISION MAKING
AUTHORITY" of the Original Agreement ((2)A.(D)a. above). Further, according toParagraph B of "VI. OWNERSHIP; INCOME DISTRIBUTION; DECISION MAKING
AUTHORITY" of the Original Agreement, the "intellectual property rights, etc. including
trademarks" are to be jointly owned by the Defendant and Dr. A ((2)A.(D)a. above).
7

Meanwhile, intellectual property rights to be owned by the Defendant (Reprogenetics)
pursuant to Paragraph A of "7. Ownership and Proprietary Rights" of the Amended
Agreement are "any intellectual property derived in whole or in part from its intellectual
property in the joint venture," not the "intellectual property in the joint venture" per se.
Therefore, the court finds that properties to be retained by the Defendant as a sole ownerare different from the "intellectual property in the joint venture."
Based on the above, it is possible to understand that Paragraph A of "7. Ownershipand Proprietary Rights" of the Amended Agreement does not change the provisions ofParagraph B of "VI. OWNERSHIP; INCOME DISTRIBUTION; DECISION MAKING
AUTHORITY" of the Original Agreement that provide joint ownership of the"intellectual property rights, etc. including trademarks" ((2)A.(D)a. above) by the
Defendant and Dr. A in an equal proportion of 50%, respectively ((2)A.(D)a. above), andthat it provides for the Defendant's sole ownership of intellectual property rights derived
from "intellectual property rights, etc. including trademarks," apart from the "intellectual
property rights, etc. including trademarks."
Paragraph C of "7. Ownership and Proprietary Rights" of the Amended Agreement
presupposes the existence of "joint intellectual property rights created, conceived ordeveloped as a result of this joint venture" ((2)B.(D)b. above). This can be considered as
evidence that the Amended Agreement does not change the provisions of Paragraph B of"VI. OWNERSHIP; INCOME DISTRIBUTION; DECISION MAKING AUTHORITY"of the Original Agreement that provide joint ownership of the "intellectual property rights,
etc. including trademarks" by the Defendant and Dr. A in an equal proportion of 50%,
respectively ((2)A.(D)a. above).
C. Relationship with governing laws
It should be noted that the interpretations described in A. and B. above are only
relevant on the presumption that the Original Agreement and Amended Agreement
designate the laws of the United States and the State of New Jersey as governing laws((2)A.(C) and (2)B.(C) above) (Article 7 of the Act on General Rules for Application ofLaws).
(4) Ownership of the Trademark Right
A. Yugen Kaisha REPROGENETICS is a special limited company aiming at engaging in
genetic testing, medical and health counselling services and all incidental businesses, andits directors are Dr. A and the Defendant's former representative, B (No. 2-1 above).
Yugen Kaisha REPROGENETICS was incorporated on August 20, 2004, immediately
after the Original Agreement was executed on July 11, 2004 (No. 2-1 above). Therefore,
this company is considered as a special limited company incorporated for the purpose of8

conducting the joint venture under the Original Agreement, and means "Reprogenetics
Japan" referred to in the preface of the Amended Agreement ((2)B.(B) above). Meanwhile,
the Trademark "Reprogenetics" (in standard characters) was applied for registration by
Yugen Kaisha REPROGENETICS, designating Class 42 "cell genetic testing" and Class
44 "genetic testing for medical purpose; psychological testing and counselling for medical
and health services" as designated goods or services. Then, the Trademark Right isnecessary for this company and Dr. A to conduct the joint venture under the Original
Agreement in Japan and its significance for the joint venture is critical, and therefore,
there is room to understand that it falls under "intellectual property rights, etc. including
trademarks" ((2)A.(D)a. above) referred to in Paragraph B of "VI. OWNERSHIP;
INCOME DISTRIBUTION; DECISION MAKING AUTHORITY" of the Original
Agreement. In addition, according to the provisions of Paragraph B of "VI.
OWNERSHIP; INCOME DISTRIBUTION; DECISION MAKING AUTHORITY" ofthe Original Agreement ((2)A.(D)a. above), the "intellectual property rights, etc.
including trademarks" are to be jointly owned by the Defendant and Dr. A in an equal
proportion of 50%, respectively. So, it is possible to understand that, as between the
Defendant and Dr. A, the Trademark Right is under their joint ownership and each party
retains 50% share, respectively.
B. As already discussed in (3)B.(B)b. above, there is room to understand that Paragraph
A of "7. Ownership and Proprietary Rights" of the Amended Agreement does not change
the provisions of Paragraph B of "VI. OWNERSHIP; INCOME DISTRIBUTION;DECISION MAKING AUTHORITY" of the Original Agreement ((2)A.(D)a. above) thatprovide the joint ownership of the "intellectual property rights, etc. including trademarks"
by the Defendant and Dr. A in an equal proportion of 50%, respectively ((2)A.(D)a.
above). Considering that the Original Agreement provides the joint ownership of theTrademark Right by the Defendant and Dr. A, it cannot be found that the Amended
Agreement changes the ownership in such a way to make the Defendant the sole ownerof all rights.
(5) Whether there is an error in the JPO Decision
A. As discussed in (4) above, there is room to understand that, as between the Defendantand Dr. A, each of these parties has 50% share in the Trademark Right, and it is impossible
to affirm that all rights with respect to intellectual property rights including the Trademark
are attributed to the Defendant alone under the series of agreements between the
Defendant and Dr. A. In order to determine that, as between the Defendant and Dr. A, theDefendant is the sole owner of rights with respect to the Trademark Right, the points
including the following need to be examined and determined: [i] whether the Trademark
9Right falls under the "intellectual property rights, etc. including trademarks" provided in
Paragraph B of "VI. OWNERSHIP; INCOME DISTRIBUTION; DECISION MAKING
AUTHORITY" of the Original Agreement ((2)A.(D)a. above); [ii] whether the ownershipof intellectual property rights provided in Paragraph B of "VI. OWNERSHIP; INCOME
DISTRIBUTION; DECISION MAKING AUTHORITY" of the Original Agreement waschanged by the Amended Agreement; [iii] whether the Trademark Right is considered as"intellectual property in the joint venture" provided in Paragraph A of "7. Ownership andProprietary Rights" of the Amended Agreement ((2)B.(D)a. above), or it is considered as"any intellectual property derived in whole or in part" from such intellectual property;
and [iv] whether the Trademark Right is not considered as "any joint intellectual property
rights created, conceived or developed as a result of this joint venture" in Paragraph C of
"7. Ownership and Proprietary Rights" of the Amended Agreement ((2)B.(D)b. above).
In the JPO Decision, the JPO found that the Defendant retains all rights with respect
to intellectual property rights according to the series of agreements between the
Defendant and Dr. A, relying on the provisions of the Amended Agreement that provide"Reprogenetics shall retain ownership of any intellectual property derived in whole or inpart from its intellectual property in the joint venture," without mentioning its
interpretation concerning the Amended Agreement in relation to the Original Agreement
as pointed out in [i] through [iv] above, but this finding was incorrect. Further, based on
this finding as a presupposition, the JPO found that the application for registration of theTrademark was filed without the approval of a person who has the right pertaining to thetrademark, without a just cause, but this finding was also incorrect.
B. In addition, as a ground for finding that Yugen Kaisha REPROGENETICS made theapplication for registration of the Trademark without the Defendant's approval, without ajust cause, the JPO Decision also raises the fact that the Defendant sent to Dr. A a letter
dated June 2, 2017 to terminate the joint venture agreement constituted by the Original
Agreement and the Amended Agreement effective from August 4, 2017, and that the lettercontained the statement informing that Dr. A or Yugen Kaisha REPROGENETICS
registered the trademark "Reprogenetics" without the right to file an application forregistration of this trademark (Exhibit Ko 10; JPO Decision No. 5-2(1)D.(D)) (JPO
Decision No. 5-2(3)).
However, the letter from the Defendant to Dr. A does not explain the grounds for the
Defendant's allegation that Dr. A or Yugen Kaisha REPROGENETICS does not have aright to file an application for registration of the trademark "Reprogenetics," and Dr. A
raises an objection to the Defendant's allegation in a response letter (Exhibit Ko 10).
Further, as mentioned in (4)A. above, the Trademark Right is necessary for Yugen Kaisha
10

REPROGENETICS and Dr. A to conduct the joint venture under the Original Agreementin Japan and its significance for the joint venture is critical. As Japan adopts the first-tofile principle for trademark registration, it is difficult to conclude that the filing of an
application for registration of the Trademark by Yugen Kaisha REPROGENETICS,
which is a company incorporated for the purpose of conducting the joint venture and forwhich the Defendant's representative B assumes the position of director, obviously runs
counter to the purpose of joint venture. Thus, the grounds for the allegation raised in the
Defendant's letter are not considered to be clear. Therefore, even considering the fact thatthe Defendant sent the letter (Exhibit Ko 10), it must be concluded that the finding of the
JPO Decision is incorrect.
2. Concerning Ground for Rescission 3 (an error in finding as to "agent or representative")(1) An "agent or representative" within the meaning of Article 53-2 of the Trademark Act
should be understood not only as a person who has been given authority to represent a
person who has a right pertaining to a trademark and a representative of a corporation thathas a right pertaining to a trademark, but also as a person who is in a continuous legal
relationship under a contract with a person who has a right pertaining to a trademark, or
it should be construed that at least a person who is in a customary relationship of trustwith a person who has a right pertaining to a trademark through continuous transactions
and who forms a part of the right holder's organization for conducting business fulfills therequirements as an agent or representative.
(2) To discuss this in relation to this case, as mentioned in 1.(4)A. above, Yugen Kaisha
REPROGENETICS, the applicant of the Trademark, is a special limited company
incorporated on August 20, 2004 for the purpose of conducting the joint venture under
the Original Agreement, with Dr. A, who executed the Original Agreement and theAmended Agreement with the Defendant, serving as its director. As it is found that thiscompany falls under "Reprogenetics Japan" mentioned in the preface of the Amended
Agreement, without the need to question whether Dr. A and the aforementioned applicant
are substantially the same party, it is reasonable to conclude that this applicant falls undera person who is in a customary relationship of trust through continuous transactions under
the Original Agreement and Amended Agreement and forms a part of the organization for
conducting business of the Defendant that has the right pertaining to the trademark.
In addition, as the date of application for registration of the Trademark is September
18, 2015, Yugen Kaisha REPROGENETICS is found to fall under a former agent or
representative within one year prior to the filing date of the registration of the Trademark.
(3) Therefore, there is no error in the finding of the JPO Decision that the applicant of theTrademark (Yugen Kaisha REPROGENETICS) falls under the Defendant's former agent11

or representative within one year prior to the filing date of the trademark registration.
3. Concerning Ground for Rescission 4 (incorrect finding and determination as to thesimilarity between trademarks)(1) Determination as to the similarity between trademarks
In determining whether two trademarks are similar, the impression, memory,suggestion, etc. given to traders and consumers by the appearances, concepts,
pronunciations, etc. of the trademarks used for the identical or similar goods or services
should be examined comprehensively and integrally, and the above determination should
be made based on the specific state of transactions of such goods or services (see 1964
(Gyo-Tsu) 110, judgment of the Third Petty Bench of the Supreme Court, February 27,
1968, Minshu Vol. 22, No. 2, at 399). Furthermore, in the case of a trademark which isconsidered as a composite trademark consisting of a combination of multiple components,
it should not be permitted to extract only part of the components of the trademark andcompare that component with another person's trademark to determine the similarity
between these trademarks, except for cases such as when the component is found to givea strong, dominant impression to traders and consumers as an identifier of the source ofgoods or services, or when no pronunciation or concept that would serve as a source
identifier would be produced from the other components of the trademark, (see 1962 (O)953, judgment of the First Petty Bench of the Supreme Court, December 5, 1963, Minshu
Vol. 17, No. 12, at 1621; 1991 (Gyo-Tsu) 103, judgment of the Second Petty Bench of theSupreme Court, September 10, 1993, Minshu Vol. 47, No. 7, at 5009).
(2) Trademark
A. The Trademark is "Reprogenetics" represented in standard characters.
B. The Trademark is considered to produce the pronunciation, "reprogenetics."
C. The Trademark (Reprogenetics) is a coined word combining the word "reproduction"and "genetics." Even admitting that there are some example cases of usage as denoting
reproductive genetics (Exhibit Ko 59), it does not appear in dictionaries in Japan, and noevidence can be found to sufficiently support that this word is used generally in the areasof the designated services of the Trademark, i.e., "cell genetic testing" (Class 42) and"genetic testing for medical purpose; psychological testing and counselling for medical
and health services" (Class 44), or other areas. Therefore, it is found that the Trademark
generates no specific concept.
(3) Cited Trademark 6
A. As specified in 2. of Attachment 2, Cited Trademark 6 consists of a figure section
represented on the upper section and characters "REPROGENETICS" on the lower
section, and it is considered as a composite trademark. The figure section of Cited
12Trademark 6 consists of bifurcated curve lines aligned in opposite upward and downward
directions in a way to make the aperture parts appear on the top and bottom.
B. In Cited Trademark 6, the upper figure section and lower character section are clearly
separated. In the lower section, the characters "REPROGENETICS" are indicated andthese characters are found to constitute a coined word. Observing the composition of the
trademark as a whole, this character section can be considered to give a strong, dominant
impression to traders and consumers as an identifier of the source of services. Therefore,
the element that produces the pronunciation of Cited Trademark 6 is the part,"REPROGENETICS," in the lower section. Therefore, Cited Trademark 6 is found to
generate the pronunciation "reprogenetics."
In this regard, the Plaintiff alleges that the figure section of Cited Trademark 6
represents a character "X" combining two "Y" characters and that it only produces thepronunciation "XY reprogenetics."
However, each of the figures combined upward and downward in the figure section
can be recognized as being bifurcated but lines stretching out from the joint part are shortand it is difficult to firmly recognize the figures as representing the character "Y." In
addition, the entire shape of the figure section consists of curve lines and is significantly
different from the shape of "X" of the fonts of generally used characters or the charactersof "REPROGENETICS" in the lower section, and the figure itself is separated upwardand downward. Therefore, it is found that the figure section cannot necessarily berecognized as representing a given character but rather can be recognized as merely adesign. Accordingly, the figure section of the Trademark is not found to produce any
pronunciation, let alone the pronunciation "XY." The Plaintiff's allegation describedabove cannot be accepted.
C. As explained above, the figure section of Cited Trademark 6 is not recognized as
representing characters (B. above), and does not suggest any specific concept. In addition,
as the character section of Cited Trademark 6 "REPROGENETICS" is a coined word thatcannot be recognized as being generally used ((2)C. above), this also does not suggest
any specific concept. Therefore, even based on the observation in its entirety, Cited
Trademark 6 is not considered to suggest any specific concept.
In this regard, the Plaintiff alleges that the figure section of Cited Trademark 6
signifies "X chromosome" and "Y chromosome," which are biological terms for humanchromosomes, and therefore associates the concept of human chromosome. However, as
mentioned above, it is impossible to understand the figure section to signify humanchromosomes "X" and "Y," and the figure section cannot be considered to suggest theconcept as alleged by the Plaintiff. Therefore, the Plaintiff's allegation mentioned above13

cannot be accepted.
(4) Similarity between trademarks
As mentioned above, the Trademark and Cited Trademark 6 differ in their appearancesin that the latter has the figure section; however, the Trademark (Reprogenetics) and thecharacter section of Cited Trademark 6 (REPROGENETICS) have the same spelling,although the Trademark is spelled with lower case letters except for the first "R" whereas
Cited Trademark 6 is fully capitalized. Therefore, the Trademark and Cited Trademark 6
are similar in their appearances.
The Trademark and Cited Trademark 6 are identical in pronunciation "reprogenetics."
As neither the Trademark nor Cited Trademark 6 suggests any specific concept, theycannot be compared in terms of concept.
Then, the Trademark and Cited Trademark 6 are similar in their appearances, and they
produce the same pronunciation, while it is impossible to compare concepts. As such,considering the impression, memory, suggestion, etc. given to traders and consumers by
the appearances, concepts, pronunciations, etc., these trademarks are found to be similar.
(5) Error in the finding of the JPO Decision
Based on the above, there is no error in the JPO Decision finding that the Trademark
and Cited Trademark 6 are similar.
4. Concerning Ground for Rescission 5 (insufficient reasoning for the finding as to thesimilarity of services)
With respect to the reason for finding that the designated services of the Trademark,Class 44 "genetic testing for medical purpose; psychological testing and counselling for
medical and health services" and the designated services of Cited Trademark 6 are similar,
the JPO Decision explains as follows: "both of these services relate to medical practices"(JPO Decision No. 5-1(2)D.). Therefore, the JPO Decision is not in violation of Article
56, paragraph (1) of the Trademark Act and Article 157, paragraph (2), item (iv) of the
Patent Act.
In this regard, the Plaintiff alleges that the JPO Decision does not state the reason todetermine that "psychological test" in the designated services of the Trademark and"medical testing and patient counseling services regarding human reproduction" in thedesignated services of Cited Trademark 6 are similar. However, "psychological test" inthe designated services of the Trademark and "medical laboratory services, namely
medical testing and patient counseling services regarding human reproduction" among
the designated services of Cited Trademark 6 overlap to some degree. Further, it can beunderstood that "psychological testing and counselling for medical and health services"in the designated services of the Trademark and "medical testing and patient counseling14

services regarding human reproduction" in the designated services of Cited Trademark 6
are similar from their wordings. So, even supposing that the issues raised by the Plaintiff
are not specifically stated in the JPO Decision, it cannot be said that the JPO decision
does not state the reason for finding that Class 44 "genetic testing for medical purpose;
psychological testing and counselling for medical and health services" in the designatedservices of the Trademark and the designated services of Cited Trademark 6 are similar.
Therefore, the Plaintiff's allegation mentioned above cannot be accepted.
5. Conclusion
As mentioned in 1. above, the finding of the JPO Decision that the application forregistration of the Trademark was filed without the approval of a person who has the rightpertaining to the trademark, without a just cause, is incorrect. As this error in the finding
affects the conclusion of the JPO Decision, Grounds for Rescission 1 and 2 are wellgrounded.
For the reasons stated above, the JPO Decision shall be rescinded, and the judgment
shall be rendered as indicated in the main text.
Intellectual Property High Court, Third Division
Presiding judge: SHOJI Tamotsu
Judge: UEDA Takuya
Judge: NAKADAIRA Ken

15

Attachment 1 (Cited Trademarks)
1. Cited Trademark 1
International registration No. 1323083
Mode of trademark: As specified in 1. of Attachment 2
Designated services: Class 42 "DNA analysis services to determine paternity; genetic
mapping for scientific purposes; genetic testing for scientific research purposes;
laboratory research in the field of genetic reproduction; medical and scientific research in
the field of reproduction and genetics; medical research laboratory services; medical
research; research and development in the field of reproduction and genetics; research in
the field of reproduction and genetics; scientific research and development; scientificresearch for medical purposes in the field of reproduction and genetics," and Class 44"Medical laboratory services, namely, medical laboratory services, namely medical
testing and patient counseling services regarding human reproduction"
Date of international registration: May 24, 2016
Office of designated contracting parties: Office for Harmonization in the Internal Market(trademark and design), Norwegian Industrial Property Office, etc.
2. Cited Trademark 2
Application No. 256800
Country name: The United Arab Emirates
Mode of trademark: As specified in 1. of Attachment 2
Designated services: Class 42 "Scientific and technological services and research anddesign relating thereto; industrial analysis and industrial research services; design anddevelopment of computer hardware and software"
Date of application: July 19, 2016
Date of registration: January 18, 2017
3. Cited Trademark 3
Application No. 256801
Country name: The United Arab Emirates
Mode of trademark: As specified in 1. of Attachment 2
Designated services: Class 44 "Medical services; veterinary services, etc."
Date of application: July 19, 2016
Date of registration: January 18, 2017
4. Cited Trademark 416

Registration number: 1437022764
Country name: The Kingdom of Saudi Arabia
Mode of trademark: As specified in 1. of Attachment 2
Designated services: Class 42 "Scientific and technological services and research anddesign relating thereto; industrial analysis and industrial research services; design anddevelopment of computer hardware and software"
Date of application: July 18, 2016
Date of registration: October 26, 2016
5. Cited Trademark 5
Registration number: 1437022765
Country name: The Kingdom of Saudi Arabia
Mode of trademark: As specified in 1. of Attachment 2
Designated services: Class 44 "Medical services; veterinary services, etc."
Date of application: July 18, 2016
Date of registration: October 26, 2016
6. Cited Trademark 6
Registration number: 3014461 (Exhibit Ko 11)
Country name: The United States of America
Mode of trademark: As specified in 2. of Attachment 2
Designated services: Class 44 "medical laboratory services, namely medical laboratory
services, namely medical testing and patient counseling services regarding humanreproduction"
Date of application: August 25, 2003
Date of registration: November 15, 2005
7. Cited Trademark 7
Registration number: 2654316
Country name: The Argentine Republic
Mode of trademark: "REPROGENETICS ARGENTINA"
Designated services: "all designated services" in Class 44
Date of application: April 10, 2013
Date of registration: June 11, 2014
The right holder of Cited Trademark 7 prior to the transfer is "TANGO GENICS S.A."17

8. Cited Trademark 8
Registration number: 2687690
Country name: The Argentine Republic
Mode of trademark: As specified in 1. of Attachment 1
Designated services: Class 44 "Medical services; veterinary services; hygienic and beauty
care for human beings or animals"
Date of application: March 15, 2013
Date of registration: October 23, 2014
The right pertaining to Cited Trademark 8 was transferred from TANGO GENICS S.A.
to the Defendant on March 18, 2016.
9. Cited Trademark 9
Registration number: 2687689
Country name: The Argentine Republic
Mode of trademark: As specified in 1. of Attachment 1
Designated services: Class 42 "Scientific and technological research"
Date of application: March 15, 2013
Date of registration: October 23, 2014
The right pertaining to Cited Trademark 9 was transferred from "TANGO GENICS S.A."
to the Defendant on March 18, 2016.
10. Cited Trademark 10
Registration number: 2654315
Country name: The Argentine Republic
Mode of trademark: "REPROGENETICS ARGENTINA"
Designated services: "all designated services" in Class 42
Date of application: April 10, 2013
Date of registration: June 11, 2014
The right holder of Cited Trademark 10 prior to the transfer is "TANGO GENICS S.A."
11. Cited Trademark 11
Registration number: 003615325
Country name: The European Union
Mode of trademark: As specified in 3. of Attachment 2
Designated products/services: Class 16 "Paper, cardboard 5 and goods made from thesematerials, not in other classes; printing materials; bookbinding material; photographs;
18

stationery; adhesives for stationery or household purposes; artists material; paint brushes;
instructional or teaching machines (except apparatus); plastic materials for packing (notincluded in other classes); printing types; printing blocks; in particular, publications,magazines, periodicals and catalogues," Class 41 "Provision of education; providing oftraining; entertainment; cultural activities; in particular, arranging and conducting
colloquiums, conferences, congresses, seminars, symposiums and training workshops,
publication of books; electronic publication of books and periodicals online, and Class 42"Scientific and technological services and research and design relating thereto; industrial
analysis and research services; in particular, analysis of embryos and gametes"
Date of application: January 9, 2004
Date of registration: June 23, 2005
Right holder: REPROGENETICS SPAIN S.A.

19

Attachment 2
1 (Cited Trademarks 1 through 5, Cited Trademark 8, Cited Trademark 9)

2 (Cited Trademark 6)

3 (Cited Trademark 11)

20