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July 21, 2023

Trademark News

The IP High Court found the trademark "Scrum Master (standard characters)" to fall under Article 3(1)(iii) of the Trademark Act in relation to services such as "education and training relating to the use of information technology”.

The plaintiffs filed an invalidation trial against a trademark registration of “Scrum Master” (standard characters) (Reg. No. 6042646) on the ground that it falls under Article 3(1)(iii) of the Trademark Act (lack of distinctiveness) and on other grounds.　The Japan Patent Office (“JPO”) rendered a trial decision that the trademark should not be invalidated relating to services such as " education and training relating to the use of information technology" in class 41 ("Designated Services”). The plaintiffs filed a lawsuit with the Intellectual Property High Court (“IP High Court”) to appeal and cancel the trial decision. The IP High Court found that “Scrum Master” (standard characters) falls under Article 3(1)(iii) of the Trademark Act as the mark would be generally recognized as indicating the quality (details) of Designated Services, and revoked the portion of the trial decision relating to the Designated Services (IP High Court Judgement, May 19, 2022 (Case number: 2021 (Gyo-Ke) 10100)).

Summary of the case
The defendant is the owner of the trademark registration (Reg. No.6042646) ("Trademark") shown below.

Mark; Scrum Master (standard characters)
Filing date; June 19, 2009
Date of decision of registration: April 17, 2008
Registration date; May 11, 2008
Designated goods and designated services;
Class 16; Educational materials; books; periodicals; printed matter; etc.
Class 35; Advertising, etc.
Class 41; "providing electronic publications; providing still images, moving images, still images with sound, moving images with sound, videos, electronic publications, and educational information through telecommunication lines" and " education and training relating to the use of information technology;" etc.


On September 27, 2019, the plaintiffs filed an invalidation trial against the Trademark (Invalidation trial case No. 2019-890057) on the grounds that the Trademark falls under Article 3(1)(iii), etc. of the Trademark Act.

On July 21, 2021, the JPO issued a trial decision (“Trial Decision") as follows.

  • The Trademark falls under Article 3(1)(iii) and Article 4(1)(xvi) of the Trademark Act relating to " Educational materials; books; periodicals; printed matter" in class 16 and "providing electronic publications; providing still images, moving images, still images with sound, moving images with sound, videos, electronic publications, and educational information through telecommunication lines” in class 41. Therefore, the registration of the Trademark should be partially invalidated relating to these goods and services.
  • The Trademark should not be invalidated relating to services such as " education and training relating to the use of information technology" in class 41 ("Designated Services”).

In particular, the summary of the reasons why the JPO determined that the Designated Services do not fall under Article 3(1)(iii) of the Trademark Act are as follows.

  • At the timing of the decision of registration, "Scrum Master" was understood and recognized in the computer and IT-related fields as indicating a role in "Scrum", which is an agile software development method (Author's note: “agile software development” refers to the philosophy that the development and testing of a small program should be repeated to bring the entire program closer to completion).
  • Between 2003 and 2017, prior to the registration of the Trademark, books and articles describing "Scrum Master" were published.
  • We can find descriptions of the "Scrum Master" certification system, training and seminars, etc. in magazines and websites published and created between 2003 and 2018, prior to the decision of registration.
  • However, there is limited evidence of training and seminars specialized in "Scrum Master" and there is neither explanation of the details of such training and seminars nor concrete evidence of the scale and frequency of such training and seminars, etc. In addition, the number of qualified "Scrum Master" certifiers is not very large, Therefore, it is difficult to say that when the Trademark is used for the Designated Services, the Trademark should make people understand that the Designated Services should be services that are related to "Scrum Master".

The plaintiffs filed a law suit with the IP High Court to appeal and cancel the Trial Decision on August 27, 2021, seeking revocation of the portion of the trial decision relating to the Designated Services.

IP High Court Judgement
The Intellectual Property High Court held that the purpose of Article 3(1)(iii) of the Trademark Act is as follows.

Article 3(1)(iii) of the Trademark Act provides that "a trademark consisting solely of a mark for services indicating the location of provision, quality, articles to be used in the provision, efficacy, intended purpose, modes, method or features including time, quantity or price of provision in a common manner” lacks the requirements for registration as a trademark. Such a trademark is merely a mark expressing and indicating the location of the provision, quality, articles to be used in the provision, efficacy, intended purpose, and other features in relation to the designated services. So, any person would want to use the mark as a necessary and appropriate indication for transactions, and it is inappropriate for the public interest to approve exclusive use of the mark by a specific person. Additionally, the mark is generally used and it lacks the ability to serve as a source identifier of services in many cases.

Therefore, in order to acknowledge that a certain trademark is a trademark consisting solely of a mark indicating the quality of the designated services in a common manner, it is understood to be enough for the trademark to be a necessary and appropriate indication for transactions as one indicating the quality of services in relation to the designated services, and to be generally recognized by traders and consumers as an indication of service quality when being used for the designated services. It is construed that the trademark is not required to be actually used for the designated services.

Based on this, as described below, the IP High Court held that the Trademark falls under Article 3(1)(iii) of the Trademark Act in relation to the Designated Services such as "education and training relating to the use of information technology" and that the portion of the Trial Decision relating to the Designated Services should be revoked.

  • At the time of the decision of registration of the Trademark, the term "Scrum" was recognized to indicate one of the agile software development methods in the field related to computers and IT, and the term "Scrum Master" is recognized as indicating one of the roles in the "Scrum," which is one of the agile software development methods.
  • The term "master" generally means "owner, head, ruler", "to acquire, to become expert in something" So, it is found that the term "Scrum Master" generates a concept of “a person who acquired Scrum," and / or “a person who becomes an expert in Scrum”.
  • If the Trademark is used for "education and training, workshops, and seminars, etc." included in the designated services, traders and consumers would understand that the education and training, etc. are aimed for the acquisition of "Scrum," or are education and training, etc. related to a specific role in "Scrum". So, it is reasonable to find that the Trademark is generally recognized to indicate the quality (details) of said services.
  • The Trademark is comprised of standard characters and consist solely of a mark indicating the characters of "Scrum Master" in a common manner.
  • Therefore, the Trademark is found to fall under a trademark consisting solely of a mark indicating the quality (details) of the Designated Services in a common manner (Article 3(1)(iii) of the Trademark Act).



Comments
The Trial Decision and the judgment by the IP High Court differed as to whether the Trademark falls under Article 3(1)(iii) of the Trademark Act in relation to the Designated Services such as " education and training relating to the use of information technology”.

In the Trial Decision, the trial board pointed that there is limited evidence of training and seminars specialized in "Scrum Master" and the Trademark should not be considered to fall under Article 3(1)(iii) of the Trademark Act in relation to the Designated Services.

On the other hand, the IP High court stated that in order to acknowledge that a certain trademark is a trademark falling under Article 3(1)(iii) of the Trademark Act, it is enough for the trademark to be a necessary and appropriate indication for transactions as one indicating the quality of services in relation to the designated services, and to be generally recognized by traders and consumers as an indication of service quality when being used for the designated services, and the trademark is not required to be actually used for the designated services.

According to this judgement by the IP High Court, if a person wants to claim that a registered trademark is a descriptive trademark under Article 3(1)(iii) of the Trademark Act, it may be sufficient to argue that the trademark is generally recognized as indicating the quality of the goods or services from the composition of the trademark itself, even if the person cannot submit evidence that show the fact that the mark is actually used for indicating the quality of the goods or services.

Written by: Mr. Kazunari Horiuchi (Attorney at Law, Patent Attorney)