The trademark law prohibits any mark incapable of serving as a source indicator from being registered under Article 3 (1).
Article 3(1) of the trademark law
Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:
(i) consists solely of a mark indicating, in a common manner, the common name of the goods or services;
(ii) is customarily used in connection with the goods or services;
(iii) consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision;
(iv) consists solely of a mark indicating, in a common manner, a common surname or name of a juridical person;
(v) consists solely of a very simple and common mark; or
(vi) is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.
How to overcome refusal under Article 3(1)
We have three options to overcome the refusal under Article 3(1).
Option 1: Opposing to examiner’s assertion and dispute inherent distinctiveness.
Examiner often withdraws a refusal if we could convince the examiner of inherent distinctiveness in a response. Mostly, where applied mark is composed of two or three words, it is worthy of arguing distinctiveness of the mark in its entirety even though respective word is deemed descriptive.
Option 2: Arguing acquired distinctiveness of applied mark if applicant has substantial used of the mark.
A mark having functioned as a source indicator resulting from extensive and substantial use can be exceptionally registered under Article 3(2) of the trademark law regardless of descriptive meaning of the mark.
Notwithstanding the preceding paragraph, a trademark that falls under any of items (iii) to (v) of the preceding paragraph may be registered if, as a result of the use of thetrademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person.
Option 3: Asserting a unique appearance of the mark even if admittedly the mark itself is descriptive without such appearance.
If applied mark contains figurative elements or depicts word(s) with an unfamiliar font design, it is still possible to overcome the refusal since Article 3(1) is applicable to a mark depicted “in a common manner”.
In other words, descriptive term(s) written in an uncommon manner can be registered regardless of original meaning of the mark.
Needless to say, it is not allowed to amend font design of applied mark during examination based on Article 16-2. Therefore, third option should be taken into consideration prior to filing an application.
Where an amendment made to the designated goods or designated services, or to the trademark for which registration is sought as stated in the application, is considered to cause any change of the gist thereof, the examiner shall dismiss the amendment by a ruling.
Masaki MIKAMI – Attorney at IP Law, Japan
MARKS IP LAW FIRM