JPO aims to encourage fast track examination to users’ benefit

On February 6, 2017, the Japan Patent Office (JPO) revised the Guidelines for Accelerated Trademark Examination with an attempt to meet the public needs for expedited examination proceedings and to encourage efficient and frequent use of accelerated examination by newly adding two types of trademark applications to  the Guidelines.

Presently, following trademark applications are allowed to take the fast-track path on demand from applicant.

[Case 1] Applicant is in use of or likely to use an applied mark on more than one of goods/services in the designation, and in urgent need of registration.

To meet an urgent need requirement, applicant is required to demonstrate ; (i) unauthorized third party uses an applied mark, (ii) any third party request a license to use the applied mark, (iii) any third party demand applicant to cease a use of the applied mark , or (iv) applicant filed the identical mark to foreign country.

[Case 2] Applicant is in use of or likely to use an applied mark on every goods/services in the designation.

NEW ACCELERATION EXAMINATION GUIDELINES

New acceleration examination guidelines admit “Case 3” in addition to the above.

[Case 3] Applicant is in use of or likely to use an applied mark on more than one of goods/services in the designation, and description of goods/services are all in conformity with that of listed in the Examination guidelines for similar goods and services.

Besides, (v) where applicant seeks to apply for an international registration of trademark identical with the applied mark through the Madrid Protocol, it is also admitted to meet an urgent need requirement for Case 1.

Below lists acceleration conditions to each case under the new guidelines.

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New guideline for accelerated examination is in force on February 6, 2017.

Referential information is available at the website of:
News release from JPO –  http://www.meti.go.jp/english/press/2017/0206_003.html
Examination guidelines for similar goods/services – http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/goods_services_10-2015.htm

1187hirai%e4%bf%ae%e6%ad%a3003_2MASAKI MIKAMI,
Attorney at IP Law – Founder of MARKS IP LAW FIRM

3D shape of plastic clip bag closure is registrable due to acquired distinctiveness

Appeal Board of the JPO admitted to register a three-dimensional mark in the shape of plastic clip bag closure with respect to the goods of “Plastic clips for closing bags of bread products or packages of bread products; plastic bag opening stoppers for packages of bread products; plastic opening stoppers for bags of bread products” in class 20 [Appeal No. 2015-15882].

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INITIAL EXAMINATION

At an initial examination, the applied mark was totally refused under Article 3(1)(iii) of the Trademark Law since examiner considered the mark is deemed descriptive in relation to the designated goods and it has yet to acquire distinctiveness.

“the trademark in the application consists of a three-dimensional shape, and cannot be recognized as being equipped with a unique form which is hard to expect from the purpose and function of the designated goods or a decorative shape giving a special impression and the like, and traders and consumers just recognize shapes themselves of ‘plastic clips for closing bags of food; plastic bag opening stoppers for packages of food; plastic opening stoppers for bags of food’ which are the designated goods, and the shapes themselves cannot be recognized to have force for distinguishing relevant products from others, so that it is recognized as a trademark consisting solely of a mark indicating the shape of the designated goods in a common way.  Therefore, the trademark in the application falls under Article 3(1)(iii) of the Trademark Act. Furthermore, with the evidences submitted by the applicant, as a result of the use of the trademark in the application generally in the designated goods, it cannot be said that the trademark enables consumers to recognize the goods as being connected with a certain person’s business, so that the trademark does not meet requirements stipulated in Article 3(2) of the Trademark Act.”

 

APPEAL

Applicant, KWIK LOK CORPORATION, a US corporation immediately filed an appeal against the refusal and argued inherent distinctiveness as well as acquired distinctiveness.

The Appeal Board upheld examiner’s finding that the mark just indicates the shape of designated goods in a common way.

In the meantime, the Board denied examiner’s decision regrding acquired distinctiveness of the mark in relation to the goods in question by taking into consideration of 100% market share and 90% brand awareness among relevant consumers.

“goods in the shape of the applied 3-D mark have been continuously manufactured by the Japanese subsidiary of KWIK LOK CORPORATION for about 9 years since 2007 until now, and about 2,600 million pieces of that are sold over the country every year, and it is recognized that the almost 100% of the share is possessed in the opening stoppers for bags of loaves of bread. Furthermore, the promotional advertising of goods in the shape of the applied 3-D mark has been continuously carried out by setting up a booth at the exhibitions for the industry and the like, and the awareness in the makers for manufacturing and selling the bread products, which are the main consumers, reaches 90%. Then, it is reasonable that the applied mark came to enable consumers to recognize the goods in relation to business of the applicant, as a result of continuous use for a long period by Japanese subsidiary of the applicant, concerning “plastic clips for closing bags of bread products or packages of bread products; plastic bag opening stopper for packages of bread products; plastic opening stopper for bags of bread products” which just correspond to the designated goods in class 20.”

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Article 2(4) of the Trademark Law

Article 2(4) of the Trademark Law stipulates that goods in the shape of a mark satisfies requirement to affix the mark to goods provided for in Article 2(3).


Article 2(3)

(3) “Use” with respect to a mark as used in this Act means any of the following acts:

 (i) to affix a mark to goods or packages of goods;

 (ii) to assign, deliver, display for the purpose of assignment or delivery, export, import or provide through an electric telecommunication line, goods or packages of goods to which a mark is affixed;

 (iii) in the course of the provision of services, to affix a mark to articles to be used by a person who receives the said services (including articles to be assigned or loaned; the same shall apply hereinafter);

 (iv) in the course of the provision of services, to provide the said services by using articles to which a mark is affixed and which are to be used by a person who receives the said services;

 (v) for the purpose of providing services, to display articles to be used for the provision of the services (including articles to be used by a person who receives the services in the course of the provision of services; the same shall apply hereinafter) to which a mark is affixed;

 (vi) in the course of the provision of services, to affix a mark to articles pertaining to the provision of the said services belonging to a person who receives the services;

 (vii) in the course of the provision of services through an image viewer, by using an electromagnetic device (an electromagnetic device shall refer to any electronic, magnetic or other method that is not recognizable by human perception; the same shall apply in the following item), to provide the said services by displaying a mark on the image viewer; or
(viii) to display or distribute advertisement materials, price lists or transaction documents relating to goods or services to which a mark is affixed, or to provide information on such content, to which a mark is affixed by an electromagnetic device.

 Article 2(4)


(4) To affix a mark to goods or other articles provided for in the preceding paragraph shall include to form in the shape of the mark goods, packages of goods, articles to be used for the provision of services, or advertisement materials relating to goods or services.

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Masaki MIKAMI, Attorney at IP Law, Founder of MARKS IP LAW FIRM

ETRO was defeated with a trademark opposition over famous Pegasus emblem

The Opposition Board of JPO decided two figurative marks depicting Pegasus are deemed dissimilar from phonetic, conceptual and visual point of view and dismissed an opposition filed by ETRO S.P.A. [Opposition no. 2014-900325].

etro

Opposition by ETRO

ETRO disputed the opposed mark should be cancelled based on Article 4(1)xi of the Trademark Law due to similarity to ETRO’s famous Pegasus emblem (Opponent mark).

In an opposition brief, ETRO alleged both marks are considered confusingly similar in appearance on the grounds that both marks depict an image of Pegasus getting up on hind legs in silhouette. Besides, they are confusing in concept as well since both marks give rise to a meaning of Pegasus in the mind of consumers. Consequently, the opposed mark is deemed similar to famous Pegasus emblem.

Board decision

In the meantime, the Opposition Board concluded both marks are dissimilar contrary to ETRO’s allegation.

With respect to concept, it becomes usual to depict Pegasus in different posture and style. A mere fact that both marks share same image of Pegasus is insufficient to determine visual aspect of respective mark by taking into consideration of circumstance that Pegasus is legendary creatures as well. Thus, it is not permissible to admit both marks simply give rise to a meaning of Pegasus. Rather, they should respectively be considered a mark having no specific meaning at all.

Regarding appearance, obviously there exists difference in depicting Pegasus. Pegasus in the opposed mark gets up on hind legs. Meanwhile, the opponent mark apparently is galloping. Such difference produces distinctive impression in the mind of consumers. Difference in direction and detail depicting of Pegasus should not be neglected.

As a conclusion, the opposed mark is deemed dissimilar to famous Pegasus emblem of ETRO.

1187hirai%e4%bf%ae%e6%ad%a3003_2MASAKI MIKAMI, Attorney at IP Law (JAPAN) – MARKS IP LAW FIRM

What happens to junior application filed by trademark registration owner for the same mark designating the same goods/services?

The Trademark Law does not contain a specific provision to prohibit a junior application filed by an owner of existing trademark registration for the same mark designating the same goods/services from being registered.


Against the purpose of the Trademark Law

However, the JPO has consistently refused the junior application even if it was filed in the name of trademark registration owner on the grounds that it may result in producing duplicate exclusive right on a mark which is inconvenient from a legal point of view, namely “against the purpose of the Trademark Law”.


Trademark Examination Guidelines

Trademark Examination Guidelines (TEG) sets forth prohibition of the duplication.

 

 Chapter XVIII: Others

 

6. When the same person makes a duplicating application for the same trademark designating the same goods or services, except for cases corresponding to the provisions of Article 68-10, in principle, after the trademark in respect of the prior application is registered, the later application will be refused under the reasons that it is “against the purpose of the Trademark Law”. This is also true when the holder of the trademark right applies for a trademark registration for the same trademark designating the same goods and services.

 


There is a dispute whether the Guideline should be applied to a case where junior application filed by an owner of trademark registration for the same mark designating goods/ services more than existing registration.

 

The Trial Board has decided the junior application will not hinder the purpose of the Trademark Law to the extent it designates additional goods/services and allowed junior trademark application to be registered regardless of examiner’s continuous refusal.

 

 


New Trademark Examination Guidelines

 

Expectedly the dispute reaches a conclusion in April.

According to news release from the JPO, New TEG allows trademark registration of a junior application filed by the same entity for the same mark as long as junior application designates goods/services beyond the scope of existing registration.
Without additional designation, junior application will be refused as it is.

 

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MASAKI MIKAMI – Attorney at IP Law (JAPAN), MARKS IP LAW FIRM