New Standard Characters in trademark registration

When applying to register a trademark at the JPO, the mark itself can be one of several types.

  • Word mark in standard character
  • Word mark in specific style
  • Design (logo)
  • 3D mark (trade dress)
  • Color
  • Motion
  • Position
  • Hologram
  • Combination of above elements (other than standard character trademark)

Standard Characters 

For a mark to quality as a standard character trademark, it must consist of only acceptable standard characters – alphabetical letters, Japanese characters (Hiragana, Katakana), Chinese characters, numbers and some symbols.

Article 5(3) of the Japan Trademark Law provides:

Where a person desires to register a trademark consisting solely of characters designated by the Commissioner of the Patent Office (hereinafter referred to as “standard characters”), the application shall contain a statement indicating thereof.

Trademark Examination Manual 19.01 enumerates standard characters available in obtaining Japanese trademark registration.

 

New Standard Characters

From January 1, 2017, “New Standard Character Set” becomes effective.

Newly adopted standard characters, almost Chinese characters as below listed, are aimed to comply with characters provided in the New Japanese Industrial Standards (JIS).

 standard-character

 

In terms of trademark registration, a standard character claim allows for the registration of words, letters, numbers and some symbols without any specific font, size, style, color or other design element. It simply requires the mark to be typed out without regard to the font, style, size or color. Registering a trademark in standard characters provides the broadest form of protection regardless of the form it appears in.

1187hirai%e4%bf%ae%e6%ad%a3003_2Masaki MIKAMI – Attorney at IP law (JAPAN), MARKS IP LAW FIRM

Cancellation of Trademark Registration Filed with Malicious Intent

The Opposition Board of JPO declared cancellation of trademark registration No. 5778852 for the mark composed of a prancing horse design and term “Cavallino Lampanti” (Opposed mark) covering the goods in class 18 and 25 on the grounds that Opposed mark was registered with malicious intent to resemble a renowned horse emblem of opponent, Ferrari S.p.A., known for “cavallino rampante”, and free ride remarkable reputation bestowed on the opponent marks. [Opposition Case No. 2015-900335]

ferrari-opposition

In the opposition decision, the Board did not clearly admit similarity of the horse design depicted in both marks regardless of conceptual similarity, however, concluded the term “Cavallino Lampanti” of Opposed mark and a name “cavallino rampante” of Opponent mark are highly similar in both appearance and sound.

Besides, admittedly Opponent marks have been well known among general public in Italy even prior to an application date of Opposed mark. Opponent has promoted several goods belonging to class 18 and 25 e.g. bags, necktie, T-shirts, wallets, shoes to Japanese customers as well.

Based on the above facts, presumably an applicant of Opposed mark must have been acquainted with such circumstances and Opponent’s business. If so, it is not deniable to conclude that Opposed mark was filed with malicious intent to harm Opponent business and free ride valuable reputation bestowed on famous brand.

As a conclusion, the Board cancelled Opposed mark based on Article 4 (1) (xix) of the Trademark Law.

 

Article 4(1)(xix)

“No trademark shall be registered if the trademark is identical with, or similar to, a trademark which is well known among consumers in Japan or abroad as that indicating goods or services pertaining to a business of another person, if such trademark is used for unfair purposes (referring to the purpose of gaining unfair profits, the purpose of causing damage to the other person, or any other unfair purposes, the same shall apply hereinafter).”

 

Article 4(1)(xix) aims to prevent unauthorized entities from registering a well-known mark in foreign country even if the mark itself has not yet acquired high recognition in Japan to the extent relevant domestic consumers become aware of such situation in foreign country. The article plays a significant role in attacking a fraudulent trademark registration where it designates goods or services remotely associated with business of a famous brand owner.

1187hirai%e4%bf%ae%e6%ad%a3003_2Masaki MIKAMI – Attorney at IP Law (Japan)

MARKS IP LAW FIRM http://www.marks-iplaw.jp/

First to file rule – How to solve a conflict filed on the same date

The Japan Trademark Law follows “first to file” rule under which a registration is granted to the person who is first to file a trademark application, whether or not he or she began to use the mark before others.

 

Article 4 (1)(Xi) of the Trademark Law

“No trademark shall be registered if the trademark is identical with, or similar to, another person’s registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services relating to the said registered trademark, or goods or services similar thereto.”

 

Provided that a senior mark has yet to be registered at the time of a junior application, but expected in due course, Article 8(1) is applicable.

 

Article 8(1)

“Where two or more applications for trademark registration relating to identical or similar trademarks which are to be used in connection with identical or similar goods or services have been filed on different dates, only the applicant who filed the application for trademark registration on the earlier date shall be entitled to register the trademark in question.”

 

Article 4(1)(xi) and 8(1) provides a decisive solution to deal with conflicting marks filed in different dates based on the “first to file” rule.

 

What happens when conflicting marks are filed on the same date?

 

Article 8(2), (4) of the Trademark law stipulates that the JPO requests applicants to negotiate voluntarily to determine which party is entitled to be a registrant.

 

Article 8(2)

“Where two or more applications for trademark registration relating to identical or similar trademarks which are to be used in connection with identical or similar goods or services have been filed on the same date, only one applicant who is to be determined by consultations among the applicants who filed such applications shall be entitled to register the trademark in question.”

 

Given applicants failed to reach an agreement, the JPO conducts a lotteryto select either applicant for registration in accordance with Article 8(5).

The lottery is conducted using a lottery machine.

 

Article 8(5)

“Where no agreement is reached in the consultations held pursuant to paragraph (2) or no report is submitted within the designated time limit set forth in the preceding paragraph, only one applicant, selected by a lottery in a fair and just manner conducted by the Commissioner of the Patent Office, shall be entitled to register the trademark in question.”

 

This can offer us a valuable lesson.

Get good luck on your side to win a trademark registration in addition to complying with “first to file” rule!

 

Procedures for the public lottery can be seen at Trademark Examination Manual.

https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/44-01.pdf

1187hirai%e4%bf%ae%e6%ad%a3003_2 Masaki MIKAMI – Attorney at IP Law (Japan)

The Japan Patent Office (JPO) has declared to modify the amounts of the individual fee payable with respect to Japan under Article 8(7) of the Madrid Protocol.

ITEMS Present(in Swiss francs) New Amounts(in Swiss francs)
Application or Subsequent Designation First Part: 92 for one class 108
70 for each additional class 82
Second Part: 229 for each class 269
Renewal 315 for each class 371

 

This change takes effect on December 14, 2016.

Therefore, these amounts will be payable where Japan:

(a)  is designated in an international application which is received, or is deemed to have been received under Rule 11(1)(c), by the Office of origin on or after that date;  or

(b)  is the subject of a subsequent designation which is received by the Office of the Contracting Party of the holder on or after that date, or is filed directly with the International Bureau of WIPO on or after that date;  or

(c)  has been designated in an international registration which is renewed on or after that date.

 

Japan was the 5th designated member.

According to the WIPO Statistics Database, June 2016, the numbers of designations made in Madrid applications for Japan from the top 20 origins in 2015 is 13,533.

It was followed by the Switzerland (13,071) and Australia (11,993).

The most designated member was China, the only country to exceed 20,000 designations.

It has become a routine to obtain trademark registrations in Japan by means of Madrid Protocol.

1187hirai%e4%bf%ae%e6%ad%a3003_2

Masaki MIKAMI – Attorney at IP Law (Japan)

Can Slogans be Trademarks?

Properly marketed slogans, product phrases and other types of taglines serve to build a brand identity in the minds of consumers. Such slogans become instantly synonymous with the brand, reflecting the company’s products and values in one short statement, and thus worthy of trademark registration.

Brand owners should seek to protect and enforce their rights using trademark law.

 

The question is can slogans be registered as a trademark?

In order to be registered as a trademark, slogans or taglines will have to fulfil the usual criteria for trademark registration, in that it must:

  • Be ‘distinctive’: if the trademark is too descriptive of the goods or services or any characteristics of them, the JPO will likely object to your trademark.

  • Be available for registration in your chosen class, i.e. the same or a similar slogan must not have been already registered in the same or similar group of your chosen goods/services;

 

Distinctiveness of Slogans

Trademark Guideline pertinent to Article 3(1)(vi) of the Trademark Law stipulates a standard for slogans.

For a trademark composed of merely terms indicating advertisement of chosen goods/services or corporate philosophy or management policy;

(1)   Where an applied trademark is recognized to indicate advertisement of chosen goods/services or corporate philosophy or management policy in a commonly-used method, such mark is not registrable based on Article 3(1)(vi). In the meantime, where an applied trademark can be recognized not only as advertisement of chosen goods/services or corporate philosophy or management policy but also as a coined word, such mark is deemed distinctive.

(2)   In determining whether the applied trademark is recognized just as advertisement of chosen goods/services, it is judged by taking a concept generated from the entire mark, connection with the chosen goods/services, actual commercial transaction, configuration of the mark, etc. into consideration comprehensively.

(a)     Circumstances in which a trademark is recognized to indicate just advertisement of chosen goods/services

(Factors)

  • The mark indicates explanations of the goods/services;
  • The mark indicates characteristics and superiority of the goods/services;
  • The mark briefly indicates quality and characteristics of the goods/services;
  • The mark consists of words commonly used for advertisement of goods/services (However, it is not required that example suggests actual use of the chosen goods/services for advertisement).

(b)     Circumstances in which a trademark recognizes something other than advertisement of goods/services

 (Factors)

  • The mark is not recognized to have a direct or specific meaning in relation to the chosen goods/services.
  • Whereas an applicant uses the applied trademark for a certain period of time as a mark which distinguishes its goods/services from those of others, a third party does not use the words identical with or similar to the applied trademark as advertisement.

(3)   In determining whether the applied trademark is recognized just as corporate philosophy or management policy, it is judged by comprehensively taking a concept generated from the entire goods/services, connection with the chosen goods/services, actual commercial transaction, configuration of the mark, etc. into consideration

(a)     Circumstances in which the trademark is recognized just as corporate philosophy or management policy

(Factors)

  • The mark describes characteristics and superiority of a company;
  • The mark is described with words commonly used to indicate corporate philosophy or management policy.

(b)     Circumstances in which the trademark is recognized something other than corporate philosophy or management policy

(Factors)

  • Whereas an applicant uses the applied mark for a certain period of  time as a mark which distinguishes its goods/services from those of others, a third party does not use the words identical with or similar to the applied mark as corporate philosophy or management policy.

It is this distinctive requirement that can often pose the greatest hurdle for brand owners seeking to register their slogans as trademarks.

 

Precedent cases

JPO has rejected following slogans due to lack of distinctiveness based on above criteria.

“KEEP THE LIFE LINE”
“ECO-STYLE”
“TOTAL CAR LIFE”
“TECHNOLOGY FOR A HEALTHY WORLD”

 

1187hirai%e4%bf%ae%e6%ad%a3003_2  MASAKI MIKAMI – Attorney at IP Law

The Appeal Board overruled examiner decision to negate inherent distinctiveness of a mark consisting of landscape painting.

Applied mark consists of a landscape painting depicting trees, pond and semicircular wooden bridge on the precincts of a shrine as shown below.

 2014-20654

Initial refusal by JPO examiner

At initial examination, examiner rejected the applied mark based on Article 3(1)(vi) of the Trademark Law since it is apparent that average consumers with an ordinary care of apparel in class 25 recognize the mark merely indicating landscape painting of a traditional shrine and are unlikely to conceive the mark as a source indicator by taking into account of circumstance that landscape design is commonly printed on apparels, T-shirts.

Article 3(1)(vi) – Requirements for trademark registration

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.

Board decision 

In the meantime, the Appeal Board admitted inherent distinctiveness of the landscape painting on the grounds that mandatory survey failed to reveal a fact to convince the applied mark itself is used on T-shirt in general.

Thus, even if it becomes common to print landscape design on T-shirts admittedly, as long as the applied landscape has not been used on apparel too often, it is rather reasonable to conclude that the applied mark is deemed inherently distinctive as a source indicator of apparel. Consequently, the examiner decision should be overruled [Fufuku2015-7412].

 

In my opinion, it is doubtful whether average consumers at a glance of apparel are able to distinguish a landscape painting serving as source indicator from non-distinctive landscape paintings. Furthermore, with respect to the landscape in question, similar landscape can be seen often at historical shrines or temples in our country.

The IP High Court ruled registered mark “KIRIN” is used independently regardless of promotional campaign named as “KIRIN Plus-i”

On November 7, 2016, the IP High Court ruled to dismiss plaintiff’s appeal in favor of an owner of famous beverage brand “KIRIN”, Kirin Company Limited, and concluded that the company has used registered mark “KIRIN” in dispute via a group company of KIRIN Holdings [Heisei28 (Gyo-Ke) 10093].

Doctrine of file wrapper estoppel 

In a non-use cancellation lawsuit, plaintiff alleged Kirin Co. violated doctrine of file wrapper estoppel by citing the facts that Kirin Co. has advertised health-conscious food products and beverages under the name of “KIRIN Plus-i”. In the meantime, Kirin Co. asserted registered mark “KIRIN” is used independently in configuration of the “KIRIN Plus-i” logo during a cancellation trial.

 kirin

The IP High Court denied plaintiff’s allegation on the grounds that the mark “KIRIN” has been used and become famous in itself as a source indicator of Kirin Group so long.

Thus, promotional campaign named “KIRIN Plus-i” for health-conscious food products and beverages shall not be deemed inconsistent with any assertion made by Kirin Co. at cancellation trial.

Combination mark

Plaintiff also alleged Kirin Co. uses a word mark “KIRIN” combining with the “Plus-i” logo on goods in dispute since “KIRIN Plus-i” is just used on specific food products and beverages for health-conscious consumers.

The IP High Court denied the allegation as well.

By taking into consideration of remarkable prestige of the mark “KIRIN” and visual distinction between “KIRIN” and “Plus-i” in appearance, it is reasonable to consider the portion of “KIRIN” in itself functions as a source indicator independently.

YouTube social icon serves to function as a source indicator of hosting service via internet due to inherent distinctiveness.

On September 23, the Appeal Board admitted to register YouTube social icon on the grounds that the icon is deemed a uniquely coined device in its entirety even if respective element lacks inherent distinctiveness and right pointing triangle represents a play button for videos and music in general [Fufuku2016-6415].

youtube-icon_icon-icons-com_52898

The JPO examiner took a view that the mark is not allowed for registration based on Article 3 (1)(vi) since the icon consisting of right pointing triangle, white rounded rectangle and red round square is merely perceived as a play button for videos and music when used on services provided via internet, not a source indicator.

 

Article 3 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.

 

Article 3(1)(vi) is a comprehensive provision aiming to bar registration of any descriptive mark to which Article 3(1)(i) to (v) is not applicable.

Any mark to be refused under Article 3(1) can be exceptionally registered on the condition that it has acquired secondary meaning by means of extensive and substantial use based on Article 3(2).

The Board did not count on Article 3(2) to admit registration of YouTube social icon in the decision as mentioned above reason.

“ROYAL PRESTIGE NEO” is decided similar to “ROYAL PRESTIGE” (JPO Appeal No. 2015-5083)

The Appeal Board of the JPO decided a word mark “POYAL PRESTIGE NEO” covering the goods of “Schoolchildren’s backpacks” in class 18 is confusingly similar to senior registrations for mark consisting of, or containing the term “ROYAL PRESTIGE” in the same class.

 

JPO examiner refused to register an applied mark “ROYAL PRESTIGE NEO” by citing senior registrations for the mark “ROYAL PRESTIGE”.

 royal-prestige-neo

Applicant filed an appeal against examiner’s decision and argued that

“In evaluating similarity of mark, the term “PRESTIGE NEO”, having a meaning of “new fame”, in configuration of the applied mark should be considered predominant since the word “ROYAL” is used to suggest quality with the highest grade in the Schoolchildren’s backpacks industry.”

 

However, the Board rejected such arguments on the grounds that:

“in consideration of configuration and meaning of respective word constituting the applied mark, “ROYAL PRESTIGE” is easily recognized as an implication of “fame of king. Meanwhile, it is difficult to consider that “NEO” (new) at the end modifies “ROYAL” and “PRESTIGE” immediately, and thus three words are hardly recognized as an implication of ” new king’s(fame)” and “new fame (king’s)”

“NEO (new) is a word which generally indicates the quality of goods, and it is assumed that “NEO” does not have the function for distinguishing relevant products from others, namely a weak term as source indicator. In the industry for dealing with Schoolchildren’s backpacks, bags, and the like, the word “NEO” coming after product name or series trade name is commonly used to indicate a goods is different from traditional ones or the latest product. As a consequence, where the applied mark is used on the designated goods, traders and consumers at the sight of applied mark are likely to perceive the portion of “ROYAL PRESTIGE” having a meaning of “fame of king” as a source indicator, and remaining term of “NEO” as a mere indication of quality of the goods in dispute. Even though a term “ROYAL” is occasionally used to suggest quality of goods, it is not applicable to the subject case by taking into consideration of a whole configuration of the applied mark.”

 Applicant counterargued by referring to coexisting registrations in order to bolster and demonstrate dissimilarity of mark admitted by JPO previously notwithstanding a mere difference of term “NEO”.

 The Board dismissed the allegation on following grounds as well.

“similarity of mark should be specifically and individually determined by considering configuration and aspect of respective mark, actual state of transaction of goods, and by comparing both marks in dispute at a time of decision or appeal decision. It is not mandatory to be bound by precedent decisions or coexisting registrations in the past”

“AQUA COLLAGEN GEL” is not a descriptive term, but a source indicator by means of acquired distinctiveness.

On October 27, 2016, the IP High Court ruled to uphold a decision by JPO declaring cancellation of opposed mark “ Dr.Coo / AQUA COLLAGEN GEL” due to conflict with senior registrations containing a term of “Aqua-Collagen-Gel” (Case no. Heisei 28 (Gyo-ke) 10090).

JPO declared cancellation of the opposed mark “Dr.Coo / AQUA COLLAGEN GEL” (see below) covering goods of “Collagen gel cosmetics; collagen gel soaps” in class 3 on the grounds that the mark is confusingly similar to senior trademark registrations cited by an opponent, an owner of Dr. Ci:Labo brand.

 aqua-collagen-gel

Applicant of the opposed mark filed a lawsuit against the decision to the IP High Court. In the lawsuit, applicant alleged that it was JPO’s error to have considered “AUQ COLLAGEN GEL” as a distinctive term in relation to the designated goods of class 3 since the term merely describes quality or material of goods in dispute and thus it can’t even take a role of source indicator.

 

In view of material facts that an opponent has consecutively used the term “Aqua-Collagen-Gel” on cosmetics since 1999, cumulative quantity of the cosmetics amounts to 30 million by the year 2015, recent annual sale of the cosmetics exceeds 12 billion JP Yen and frequent TV advertisement and publications, the IP High Court admitted the term “Aqua-Collagen-Gel” has independently served function as a source indicator of the opponent even if opponent’s cosmetics depict so-called house mark “Dr. Ci:Labo” adjacent to Aqua-Collagen-Gel”.

Based on above findings, the Court dismissed applicant’s argument to insist dissimilarity of both marks on the grounds that average consumers are likely to pay attention to a term “AQUA COLLAGEN GEL” in configuration of the opposed mark and consequently associate the term with opponent products irrespective of existence of “Dr.Coo”.