Trademark Date
Right
Case number

October 9, 20192019 (Gyo-Ke) 10062

Court

IntellectualProperty
HighCourt,FirstDivision- A case which concerns the trademark of "らくらく" and in which the court denied
applicability to Article 4, paragraph (1), item (x) of the Trademark Act by holdingthat the container and ads for Plaintiff's Product do not use the characters, "らくらく", by themselves, and that "らくらく" cannot be extracted from the mark of "らくらく正座椅子" as the essential part thereof.
Case type: Rescission of Trial Decision to Maintain
Result: Dismissed
References: Article 4, paragraph (1), item (x) of the Trademark Act
Number of related rights, etc.: Trademark Registration No. 5614453, Invalidation
Trial No. 2018-890044
Summary of the Judgment
1.

The present case is a suit against the JPO decision in which, concerning thetrial on the invalidation of trademark registration for the Trademark consisting of
the standard characters, "らくらく", and whose designated goods are Class 20"Furniture; Desks and the like", the JPO rendered a decision to maintain theTrademark.
Plaintiff asserted as the grounds for rescission that the JPO made an incorrect
determination as to applicability to Article 4, paragraph (1), item (x) of theTrademark Act.

2.

In the judgment of the present case, the court rendered a judgment as outlined
below, and dismissed Plaintiff's claim.
(1)

Similarity between trademarks should be determined on whether or notthere is a risk that the trademarks, which are to be compared, may create themisleading or confusion as to the source or origin of the products when bothtrademarks are used on identical or similar products.

Such det ermination

should be made by examining the trademarks holistically, by comprehensively
taking into consideration the impression, recollection, and association given to
the persons involved in the transaction based on the appearance, concept, andpronunciation of the trademarks when used on said products, and furthermore,as long as the actual circumstances of transaction for the products can beclarified, it is reasonable to make the determination based on the specificcircumstances of transaction.

ⅰ

(2)

It seems that Plaintiff began selling Plaintiff's Product (stool for sitting inseiza style) from around 1988, and has continued selling the product for morethan 30 years.

It is acknowledged that the number of the product sold wasapproximately 750,000 during the 12 years consisting of 2000, and 2003 to2013, and ads for Plaintiff's Product appeared in newspapers 75 times from2002 until 2006, and ads for Plaintiff's Product appeared in various catalogues,
leaflets, and websites as well.
However, while the container for Plaintiff's Product bears marks such as "ら く ら く 正 座 椅 子 ", there is no use of the characters, "ら く ら く ", bythemselves, and while many of the ads for Plaintiff's Product bear the mark, "ら く ら く 正 座 椅 子 ", there is no use of the characters, "ら く ら く ", bythemselves.

As such, it cannot be acknowledged that the cited mark of "らくらく", as asserted by Plaintiff, was well known among consumers, when an
application for registration of the Trademark was filed and when a decision togrant registration was issued, as an indication of Plaintiff's Product.
The part, "らくらく", refers to a function of Plaintiff's Product which
alleviates the numbness in legs and the pain in knee caps, allowing the person
to comfortably sit in seiza style, and the part, "正座椅子", refers to the usageof Plaintiff's Product or to the product type itself, so that neither of thecharacter parts has a function as an indicator that identifies the source or origin
by the respective character part alone, and furthermore, it is impossible toextract only the character part, "らくらく", from the indication of Plaintiff's
Product as the essential part thereof, and, it also cannot be acknowledged thatthe actual circumstances of transaction involve extraction of the "らくらく"
part.
Accordingly, the court held that the Trademark does not fall under Article
4, paragraph (1), item (x) of the Trademark Act.

ⅱ

Judgment rendered on October 9, 20192019 (Gyo-Ke) 10062

A case of seeking rescission of the JPO decision

Date of conclusion of oral argument: August 21, 2019
Judgment
Plaintiff: X
Defendant: Yugen Kaisha Technom
Main text
1. Plaintiff's claims shall be dismissed.
2. Plaintiff shall bear the court costs.
Facts and reasons
No. 1

Claim

The trial decision rendered by the JPO on March 26, 2019 for Invalidation TrialNo. 2018-890044 shall be rescinded.
No. 2

Outline of the case

1. Details of the procedures at JPO(1)

Defendant is the trademark holder of the following mark (TrademarkRegistration No. 5614453; hereinafter referred to as "Trademark") (ExhibitsKo 16, 17).
Trademark: "らくらく" (standard characters)
Application date: April 17, 2013
Date of decision for registration: August 12, 2013
Date of registration: September 13, 2013
Designated goods: Class 20 "Furniture; Desks and the like"(2)

On June 20, 2018, Plaintiff filed a request for a trial for invalidation oftrademark registration for the Trademark.

(3)

The JPO examined the above request as Invalidation Trial No. 2018890044 (hereinafter referred to as "Trial").

On March 26, 2019, the JPO

rendered a decision as indicated in the attached Decision by the Japan Patent
Office (copy) to the effect that "the request for trial of the case is groundless"("JPO Decision"), and a certified copy of the decision was delivered toPlaintiff on April 4 of the same year.
1(4)On April 25, 2019, Plaintiff filed the present suit seeking rescission of theJPO Decision.

2. Summary of the reasons for the JPO Decision
Reasons for the JPO Decision are as per the attached Decision by theJapan Patent Office (copy).

The decision is such that, in short, it cannot be

acknowledged that the cited trademark that consists of the characters, "らくら く ", was well known among consumers when an application forregistration of the Trademark was filed and when a decision to grantregistration was issued, as an indication of the product pertaining to
Plaintiff's business, so that it cannot be said that the Trademark falls underArticle 4, paragraph (1), item (x) of the Trademark Act.
3. Reason for rescission of the JPO Decision
Incorrect determination as to applicability to Article 4, paragraph (1),item (x) of the Trademark Act.
(omitted)
No. 4

Judgment of this court

1. Concerning the incorrect determination as to applicability to Article 4, paragraph(1), item (x) of the Trademark Act(1) Determination on similarity of trademarks
Similarity between trademarks should be determined on whether or notthere is a risk that the trademarks, which are to be compared, may create
misleading or confusion as to the source or origin of the products when bothtrademarks are used on identical or similar products.
shouldbemadebyexamining

theSuch determination

trademarks

holistically,

bycomprehensively taking into consideration the impression, recollection, andassociation given to the persons involved in the transaction based on theappearance, concept, and pronunciation of the trademarks when used on said
products, and furthermore, so long as the actual circumstances oftransaction for the products can be clarified, it is reasonable to make thedetermination based on specific circumstances of transaction (SupremeCourt decision 1964 (Gyo-Tsu) 110 rendered on February 27, 1968 by theThird Petty Bench; refer to Minshu Vol. 22, No. 2, p. 399).
(2) Findings
By comprehensively taking into consideration the evidence and the2entire import of the oral argument, the following facts are acknowledged.
A.

Plaintiff has sold stools for sitting in seiza style under the t rade name of"Sumitomo Sangyo", and has manufactured and sold Plaintiff's Productsince around 1988, if not earlier (Exhibit Otsu 5-1).
The number of Plaintiff's Product sold is 746,136 in total in the years
consisting of 2000, and 2003 to 2013 (Exhibits Ko 1, 2).
Plaintiff's Product is an aid tool for sitting in seiza style, and allows aperson to comfortably sit in seiza style when the person places it underneaththe buttocks and sits on it, by distributing the body weight and decreasing
the load on the knees, and thereby alleviating numbness in legs and pain in
knee caps (Exhibit Ko 12-2; entire import of the oral argument).

Plaintiffadvertises Plaintiff's Product, in ads for Plaintiff's Product described below,
by indicating words such as "For numbness in the legs and pain in the kneecaps" (Exhibits Ko 3-2 to 3-4) and "For numbness in the legs

For persons

with pain in the knee caps (Exhibits Ko 4-2 to 4-4), as a stool that allows aperson to sit comfortably in seiza style by alleviating numbness in the legs
and pain in the knee caps.
B.

The container for Plaintiff's Product which Plaintiff sells bears thecharacters, "らくらく椅子" (Exhibits Ko 8-1 to 8-4, 8-6, 8-7), "らくらく正座椅子" (Exhibit Ko 8-5), or "らくらく二段正座椅子" (Exhibit Ko 88).

C. Advertisement(A)

FromJanuary

2002

until

December

2006,

ads

indicating

photographs of Plaintiff's Product appeared along with the marks, "らくらく正座椅子" (Exhibits Ko 3-2 to 3-5, 4-2 to 4-14, 5-1 to 5-15, 6-2 to6-18, 7-2 to 7-23), "らくらく万能座椅子" (Exhibits Ko 3-1, 6-1, 6-12,7-1, 7-16), "らくらく万能正座椅子" (Exhibit Ko 6-6), and "らくらく椅子" (Exhibit Ko 7-16), for a total of 75 times in the Seikatsu Sangyo
Shimbun (Exhibits Ko 3-1 to 7-23).
(B)

Ads indicating photographs of Plaintiff's Product appeared alongwith the marks, "らくらく正座椅子" (Exhibits Ko 9-1, 9-2, 9-11), "らくらく万能座椅子" (Exhibits Ko 9-2), and "らくらく椅子" (ExhibitKo 9-2) in "2005 - 2006 Seikatsuyohin Hinmokubetsu Kigyobenran"[2005 - 2006

Livingware by Item

Handbook for Companies] issued

on June 10, 2005 (Exhibit Ko 9-1), "Seikatsu Sangyo Kigyo Meikan
2011" [2011 Directory for Companies in Living-Related Industries]3

issued on November 10, 2010 (Exhibit Ko 9-2), and "50-onbetsu
Denwacho

Yoshinogawashi-ban 2004-ban Tele & Pal 50" [Phone

Number Directory in Japanese Alphabetical OrderVersion2004 Issue

Yoshinogawa CityTele & Pal 50] issued in April 2004 (Exhibit Ko11).
(C)

Photographs of Plaintiff's Product appear along with the mark of "らく ら く 正 座 椅 子 " in a catalogue created by Plaintiff and titled"Sozosuru Kigyo" [Creative Company] (Exhibit Ko 10).

(D)

Photographs of Plaintiff's Product are introduced in the November
2011 issue of "Kyono Kenko" [Today's Health], a textbook for an NHK
TV program (Exhibits Ko 12-1, 12-2), and in the text and on thewebsite of NHK Publishing, Inc., ads containing photographs ofPlaintiff's Product appeared along with the mark of "らくらく正座いす" (Exhibits Ko 12-3, 12-4).

(E)

Ads containing photographs of Plaintiff's Product appeared alongwith the mark of "らくらく椅子" in a leaflet in a paper issued in July
1999 for Tokyu Department Store (Exhibit Ko 13-1), a leaflet in a paperissued on June 21, 2011 for Nara Coop (Exhibit Ko 13-2), a leaflet in apaper issued in March 2012 for Kintetsu Department Store (Exhibit Ko13-3), a leaflet in a paper issued in September 2012 for Kintetsu
Department Store (Exhibit Ko 13-4), a leaflet in a paper issued inDecember 2012 for Odakyu Department Store Fujisawa (Exhibit Ko 135), and a leaflet in a paper issued in December 2012 for Odakyu
Department Store Machida (Exhibit Ko 13-6).

(F)

Ads containing photographs of Plaintiff's Product appeared alongwith the mark of " ら く ら く 正 座 椅 子 " on Amazon's website on
September 18, 2007, April 21, 2010, and September 19, 2011 (Exhibits
Ko 14-1 to 14-4).
Ads containing photographs of Plaintiff's Product appeared alongwith the mark of "らくらく椅子" in a general catalogue created byYugen Kaisha Roots in 1994 and issued in the same year (Exhibit Ko15-1), and along with the mark of "らくらく正座椅子" in the General
Catalogue 2011 created by Yamasoro Art Mfg., Ltd. in 2011 (ExhibitKo 15-2), respectively.

(3) Use of the cited trademark by Plaintiff
According to the above findings (2) (A) and (C), it seems that Plaintiff4began selling Plaintiff's Product from around 1988, and has continued the sales
for more than 30 years.

It is acknowledged that the number of the productsold was approximately 750,000 during the 12 years consisting of 2000, and2003 to 2013, and ads for Plaintiff's Product appeared in the Seikatsu Sangyo
Shimbun for 75 times from 2002 until 2006, and ads for Plaintiff's Productappeared in various catalogues, leaflets, and on Amazon's website as well.
However, the container for Plaintiff's Product sold by Plaintiff bears themark of "らくらく椅子", "らくらく正座椅子", or "らくらく二段正座椅子",
and there is no use of the characters, "らくらく", by themselves (abovefinding (2) (B)).
Furthermore, many of the ads for Plaintiff's Product bear the mark, "らくらく正座椅子", and while there are ads bearing the marks of "らくらく万能座椅子", "らくらく万能正座椅子", "らくらく正座いす", and "らくらく椅子", there is no use of the characters, "らくらく", by themselves (abovefinding (2) (C)).
In that case, it should be said that it cannot be acknowledged that the citedtrademark, "ら くら く ", as asserted by Plaintiff, was well known among
consumers, when an application for registration of the Trademark was filed
and when a decision to grant registration was issued, as an indication of
Plaintiff's Product.
(4) Concerning Plaintiff's claim
A.

Plaintiff asserts that while " ら く ら く 正 座 椅 子 " is a composite
trademark consisting of joining together the part, "らくらく", and the part,"正座椅子", the character part of "らくらく" alone is what gives a strong
and dominant impression as an indicator that identifies the source or originof the product, so that this character part alone should be extracted as thetrademark that is in use by Plaintiff.
However, the part, "らくらく", is a word meaning "comfortable", andindicates a function of Plaintiff's Product which alleviates numbness in thelegs and the pain in the knee caps, allowing the person to comfortably sit inseiza style.

Furthermore, the part, "正座椅子" is a word meaning a stool

for sitting in seiza style, so that it indicates the usage of Plaintiff's Productor the product type itself.

As such, it cannot be said that neither of thecharacter parts, by the respective character part alone, has a function as anindicator that identifies the source or origin.
In that case, it cannot be said that the character part of "らくらく"5alone, from among the indication of Plaintiff's Product, gives a strong anddominant impression as an indicator that identifies the source or origin of
the product, and thus it is impossible to extract only the character part of "らくらく" as the essential part.

Accordingly, Plaintiff's assertion cannot

be accepted.
B.

Furthermore, Plaintiff asserts that, when the actual circumstance oftransaction in which "らくらく" is extracted from "らくらく正座椅子" isalso taken into consideration, the character part of "らく らく " alone
should be extracted as the mark in use by Plaintiff.
However, there is no evidence to sufficiently acknowledge thecircumstance in which "らくらく" is extracted from "らくらく正座椅子",
for example a fact that Plaintiff's Product is called by the abbreviation of "らくらく".

Plaintiff also asserts that Plaintiff and Defendant, who areparties in a transaction, carried out negotiations for the trial of the present
case as well as the earlier negotiations on the premise that "らくらく" isextracted from " ら く ら く 正 座 椅 子 ", so that there is an actual
circumstance of transaction in which "らくらく" is extracted.

However,the extraction of " ら く ら く " from " ら く ら く 正 座 椅 子 " cannot beacknowledged as an actual circumstance of transaction on the basis of theassertions made by the parties in the procedures for the trial of the present
case, and thus Plaintiff's assertion cannot be accepted.
(5) Summary
Based on what is described above, the Trademark does not fall under
Article 4, paragraph (1), item (x) of the Trademark Act.
2. Conclusion
Accordingly, Plaintiff's claim shall be dismissed for being unreasonable, andthe judgment of this court shall be rendered in the form of the main text.
Intellectual Property High Court, First Division
Presiding judge: TAKABE Makiko
Judge: KOBAYASHI YasuhikoJudge: SEKINE Sumiko6