How can a combination of descriptive words become a source indicator?

In a recent decision, the Appeal Board of Japan Patent Office (JPO) granted to protect a word mark “TOUGH CARRY” in relation to carts and trolleys of class 12.
[Appeal case no. 2017-7976]


As a result of substantive examination, the JPO examiner refused trademark application no. 2016-28871 for a mark “TOUGH CARRY” composed of descriptive words combination in relation to carts, trolleys, sleighs and sleds[vehicles], rickshaws, horse drawn carriages, bicycle trailers [Riyakah], and casting carriages of class 12 on the ground that the mark lacks distinctiveness under Article 3(1)(iii) of the Trademark Law. Examiner raised her objection based on the facts that a word of “TOUGH” means “strong and durable; not easily broken or cut”. “CARRY” means “to take or support from one place to another; convey; transport”. Besides, it is obvious that relevant consumers are familiar with both words. If so, consumers with an ordinary care will surely conceive the meaning of “being able to transport items with strong and durable capability” at the sight of trademark “TOUGH CARRY” when used on designated goods.

Appeal Board decision

In the meantime, the Appeal Board cancelled the examiner’s rejection and admitted registration of “TOUGH CARRY”.

The Board decided that, even if respective word, highly known among consumers, inherently lacks distinctiveness in relation to goods of class 12 and the entire mark gives rise to the meaning as examiner asserted, it does not mean the mark as a whole is just a direct and clear qualitative indication of specific goods.

On the case, the Board found, as a result of ex officio examination, no evidence to demonstrate the descriptive words combination of “TOUGH CARRY” is ordinarily used in transaction of carts and trolleys. Besides, there exists no circumstance to use the combination as a qualitative indication in relation to any other goods.

Consequently, it is groundless to reject the trademark “TOUGH CARRY” based on Article 3(1)(iii) since it does not give rise to any descriptive meaning in relation to the goods in question.

Occasionally, a trademark composed of descriptive words combination becomes controversial. Such disputes mostly focus on distinctiveness of the entire mark. In case the JPO found that combination of respective word is unique and remains suggestive in relation to disputed goods/service by taking account of transactional circumstance, the mark is eligible for registration regardless of descriptive meaning of each word.
In other words, it depends on competitor’s behavior and perception of relevant consumers whether a combination of descriptive words can be protected as a source indicator.

Masaki MIKAMI, Attorney at IP law – Founder of MARKS IP LAW FIRM

How to remove senior registered mark in an effective manner

How to remove trademark registration

The Japan Trademark Law provides several provisions to make trademark registrations ineffective once successfully registered.

  1. Opposition (Article 43bis)
  2. Invalidation trial (Article 46)
  3. Non-use cancellation trial (Article 50)
  4. Cancellation trial based on misleading use by registrant (Article 51)
  5. Cancellation trial based on fraudulent use by assignee of divided trademark right (Article 52bis)
  6. Cancellation trail based on misleading use by licensee (Article 53)
  7. Cancellation trial based on unauthorized registration by person concerned (Article 53bis)

Which is risk saving?

According to the statistical data released by the Japan Patent Office (JPO), it shows that non-use cancellation trial is at lowest risk in view of past success rate.

<Success rate in 2016>

  • Non-use cancellation trial: 80%
  • Invalidation trial: 47%
  • Opposition: 17%

Non-use cancellation trial

In Japan, since burden of proof to demonstrate genuine use of the disputed mark during the past three years rests just on trademark owner, non-use cancellation trial is not burdensome to claimant at all. Besides, the law does not require the claimant to have legal interest to the result of cancellation trial. It also helps to boost a preference to non-use cancellation trial.

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

JPO decided to invalidate the word mark “Bord’or” in relation to wines

In a decision to the invalidation trial jointly claimed by INSTITUT NATIONAL DE L’ORIGINE ET DE LA QUALITE and CONSEIL INTERPROFESSIONNEL DU VIN DE BORDEAUX, the Invalidation Board of Japan Patent Office (JPO) ordered to invalidate TM registration no. 5737079 for a word mark “Bord’or” in script fonts (see below) in violation of Article 4(1)(vii) of the Trademark Law.
[Invalidation case no. 2016-890075]

TM Registration no. 5737079

Mark in dispute (see above), owned by a Japanese legal entity, was filed on October 9, 2014 by designating various types of alcoholic beverages including wines in class 33. After an initial application, applicant requested the JPO to expedite substantive examination. In accordance with the request, JPO examiner put a priority on the mark and admitted to grant registration in three months subsequent to substantive examination.

Accelerated Examination

JPO applies the accelerated examination system to trademark application on the condition that the application meets the following condition.

  1. Applicant/licensee uses or will use applied mark on one of designated goods/services at least, and there exists an urgency to registration, e.g. unauthorized use by third parties, basic application to international registration,
  2. All designated goods/services are actually or shortly used by applicant/licensee, or
  3. Applicant/licensee uses or will use applied mark on one of designated goods/services at least, and all the goods/services are designated in accordance with a standard description based on Examination Guidelines for Similar Goods and Services.

Accelerated examination system enables applicant to obtain examination results in less than two months on average, which is four months shorter than regular examination.

Claimants’ allegation

Claimants argued disputed mark gives rise to the same pronunciation with BORDEAUX, “ bɔːˈdəʊ”. If so, relevant consumers shall conceive BORDEAUX, a world-famous geographical name known for an origin of French wine. Besides, according to the document produced by applicant to demonstrate actual use of disputed mark on designated goods in requesting accelerated examination, it evidently reveals intention to free-ride or dilute fame of prestigious wine.
Thus, if disputed mark is used on wines originated from areas other than BORDEAUX, it severely does harm to fame and aura of prestigious wine constituted under the strict control of domicile of origin. Then, inevitably it causes disorder to a world of global commerce in a manner inconsistent with international fidelity.

To bolster the allegation, claimants cited precedent trademark decisions involving famous French wine, e.g. ROMANEE-CONTI, BEAUJOLAIS NOUVEAU, CHABLIS. Inter alia, IP High Court ruled a word mark “CHAMPAGNE TOWER” invalid in relation to “CHAMPAGNE” based on Article 4(1)(vii).

Article 4(1)(vii) of the Japan Trademark Law

Article 4(1)(vii) prohibits any mark likely to offend public order and morals from registering.

Trademark Examination Guidelines sets forth criteria for the article and samples.

  1. Trademarks that are “likely to cause damage to public order or morality” are, for example, the trademarks that fall under the cases prescribed in (1) to (5) below.

(1) Trademarks which are, in composition per se, characters or figures, signs, three-dimensional shapes or colors or any combination thereof, or sounds that are unethical, obscene, discriminative, outrageous, or unpleasant to people. It is judged whether characters, figures, signs, three-dimensional shapes or colors or any combination thereof, or sounds are unethical, discriminative or unpleasant to people, with consideration given to their historical backgrounds, social impacts, etc. from a comprehensive viewpoint.

(2) Trademarks which do not have the composition per se as prescribed in (1) above but are liable to conflict with the public interests of the society or contravene the generally-accepted sense of morality if used for the designated goods or designated services.

(3) Trademarks with their use prohibited by other laws.

(4) Trademarks liable to dishonor a specific country or its people or trademarks generally considered contrary to the international faith.

(5) Trademarks whose registration is contrary to the order predetermined under the Trademark Act and is utterly unacceptable for lack of social reasonableness in the background to the filing of an application for trademark registration.


  1. Examples that fall under this item

(i) Trademarks that contain characters such as “university” and are likely to be mistaken for the name of universities, etc. under the School Education Act.

(ii) Trademarks that contain characters such as “士(shi)” which are likely to mislead that they represent national qualifications.

(iii) Trademarks of the name of a well-known or famous historical personage which are determined to have the risk of taking a free ride on public measures related to that personage and damage the public interests by inhibiting the performance of such measures.

(iv) Trademarks with figures indicated in a manner that may impair the dignity and honor of national flags (including foreign national flags)

(v) A sound mark related to the services of “medical treatment” which causes people to recognize siren sounds generated by ambulances that are well known in Japan.

(vi) A sound mark which causes people to recognize national anthems of Japan and other countries.

Board decision

Board found in favor of claimants that “BORDEAUX” has acquired a high degree of popularity and reputation among Japanese consumers as a source indicator of wines originated from the Bordeaux district. As long as disputed mark gives rise to the same pronunciation with BORDEAUX, it is undeniable that consumers are likely to connect the disputed mark with BORDEAUX wine or its district. If so, disputed mark free-rides or dilutes lure and image of BORDEAUX wine, and adversely affects domicile of origin strictly controlled by French government.
Consequently, Board decided to invalidate Bord’or in violation to Article 4(1)(vii).

Protection of geographical indication

The Japan Trademark Law contains provisions to protect geographical indication.
In principle, a mark merely consisting of geographical name or location is deemed descriptive and falls under Article 3(1)(iii). Even if a mark is combined geographical indication with other distinctive elements, it is subject to Article 4(1)(xvi) since the mark may mislead the quality when used on goods from other areas.
Regarding a mark indicating a place of origin off wine, Article 4(1)(xvii) plays a significant role.

Article 4(1)(xvii)

No trademark shall be registered if the trademark is comprised of a mark indicating a place of origin of wines or spirits of Japan which has been designated by the Commissioner of the Patent Office, or a mark indicating a place of origin of wines or spirits of a member of the World Trade Organization which is prohibited by the said member from being used on wines or spirits not originating from the region of the said member, if such a trademark is used in connection with wines or spirits not originating from the region in Japan or of the said member.

Geographical indications to be protected under the article can be reviewed by accessing

In this regard, it should be noted that Article 4(1)(xvii) is applicable to any mark containing a term to represent protected GI in itself. In other words, Article 4(1)(xvii) can’t block “Bord’or” since disputed mark does not contain “BORDEAUX” or its transliteration.

Masaki MIKAMI, Attorney at IP law – Founder of MARKS IP LAW FIRM

Starbucks Trademark Dispute Brewing Over Bull Pulu Tapioca Logo

The Japan Patent Office (JPO) has rejected an opposition from Starbucks to trademark registration no. 5897739 for the green-and white “BULL PULU TAPIOCA” concentric circle logo with a puppy white bull dog in the center.
[Opposition case no. 2017-900048]


Opposed mark (see below) designating goods of tapioca beverages, tapioca fruit juice beverages in class 32 and retail or wholesale services for tapioca beverages, tapioca fruit juice beverages in class 35was applied for registration on May 10, 2016 by a Japanese individual. As a result of substantive examination, JPO granted a registration on October 28, 2016.


Subsequently, Starbucks Incorporated, a US coffee chain, filed an opposition based on a conflict with famous Starbucks trademarks.

In the opposition, Starbucks alleged violation of Article 4(1)(vii), (xi) and (xv) of the Japan Trademark Law.

Article 4(1)(vii) prohibits any mark likely to offend public order and morals from registering.

Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

Article 4(1)(xv) excludes a junior mark which is likely to cause confusion with goods or services belonging to another business entity.


The Opposition Board of JPO admitted a high degree of reputation and popularity to the iconic Starbucks logo among relevant consumers at the time of initial filing and registration of the opposed mark.

In the meantime, the Board found that both marks are dissimilar due to a distinctive difference in literal elements and design depicted in the center. Besides, by taking account of severe dissimilarity of both marks, the Board denied a likelihood of confusion between the marks as well.

To bolster the public disorder allegation, Starbucks revealed the facts that applicant of the opposed mark was a former CEO of J.J. Co., Ltd., a tapioca drink parlor, and Opposed mark has been used on shop signs and cups for drink managed by J.J. Co., Ltd. in fact (see below).

The Board held that such facts are insufficient to conclude Opposed mark may offend public order and morals if registered.

Accordingly, JPO rejected an opposition challenged by Starbucks.

MASAKI MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM

How do you pronounce “Q-revo” mark?

In an administrative appeal disputing trademark similarity between TM registration no. 2705284 for word mark “REVO” and a junior trademark represented as below, the Appeal Board of Japan Patent Office (JPO) decided that both marks are deemed dissimilar and allowed to register the junior trademark accordingly.
[Appeal case no. 2017-8341]

Disputed mark

Disputed mark (see above) was applied for trademark registration on October 30, 2015 by designating goods of telecommunication machines, electronic machines and others belonging to class 9.

As a result of substantive examination by the JPO, examiner refused the disputed mark by citing a senior TM registration “REVO” based on Article 4(1)(xi) of the Trademark Law to find that the citation has also covered telecommunication machines, electronic machines in the designation which are deemed identical with disputed mark.

Subsequently, the applicant of disputed mark filed an appeal to the case.


Main issue at the appeal rested on how disputed mark should be pronounced in the assessment of trademark similarity.

In this respect, the Board held that disputed mark gives rise to a sole pronunciation of “kju- riːvo” in view of overall configuration fully consolidated from appearance.

Based on the finding, the Board compared the disputed mark and the citation in the aspect of visual appearance, sound and concept, and concluded, inter alia, both sounds, “kju- riːvo” and “ riːvo”, are distinctively dissimilar.

It has been recognized in Japan that hyphen (-) serves as a separator of words at fore-and-aft position. To see a graphical distinction between the “Q” logo and “revo”, I believe the decision isn’t quite persuasive enough.

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