Customarily used trademarks

Article 3(1)(ii) of the Japanese trademark law stipulates that

“a mark customarily used in connection with designated goods or services is not registrable”.

According to the trademark examination guideline (TEG), “customarily used trademarks” means trademarks which, having become customarily used with respect to the same type of goods or services among business operators relating to his business, are not distinctive to distinguish the goods or services of one party from those of other parties.

In a word, “customarily used trademark” results from a circumstance where a mark, coined and firstly used by registrant, became generic or descriptive, while it is inherently distinctive, as a result of free-hand use of the term on equivalent goods or services by competitors in general.

“Customarily used trademark” becomes controversy in an attempt to invalidate a trademark registration on the basis of Article 3(1)(ii), and to defend against claims of trademark infringement based on Article 26(1)(iv).

 

Article 26(1)(iv) stipulates that

“A trademark right shall have no effect on any of trademark customarily used for the designated goods or designated services or goods or services similar thereto”.

 

TEG enumerates examples of Customarily used trademark”.

(1) Trademarks consisting of characters, figures and other elements

“正宗” [MASAMUNE] (Refined Japanese sake wine)

“羽二重餅” [HABUTAEMOCHI] (Bean jam cake)

Figure of “オランダ船” [ORANDASEN] (cake)

“かきやま” [KAKIYAMA] (Rice crackers)

“観光ホテル” [KANKO HOTEL] (Provision of lodging accommodations)

“プレイガイド” [PLAY-GUIDE] (Arrangements for seats of entertainment facilities)

 

(2) Color marks

“Combination of red and white” (for wedding ceremonies)

“Combination of black and white” (for funeral ceremonies)

 

(3) Sound marks

“Cries of a street sellers who sells sweet potatoes baked on hot pebbles” (baked sweet potatoes)

“Sounds of a flute played by a street vendor who sells noodles on the streets at night (Chinese noodle supply)

 

In order to avoid successful defense, it is inevitable for registrants to take preventive action in a timely manner for the purpose of adequately protecting their trademark. Otherwise, trademark is likely to lose the strength and value of the mark.

How to avoid mispronounced marks

Unique writing system of the Japanese language consists of three different character sets: Kanji (several thousands of Chinese characters), and Hiragana and Katakana (two syllabaries of 46 characters each).

Specifically, Katakana gets used for writing foreign loanwords phonetically.

By virtue of Katakana, we get a clue to learn proper pronunciation of unpronounceable alphabetical words. In this regard, Katakana is obviously of great help to avoid phonetic slip-ups and mispronouncing high-profile brand names in Japan.

For instance,

When we come across a word “YVES SAINT LAURENT” for the first time, we most likely call it “i-bes-sein-to-lo-ren-to”.

Likewise, we may call “L’OCCITANE” as “lo-sshi-ta-ne”, “PEUGEOT” as “pe-u-ge-o-to”, “RENAULT” as “re-na-u-ru-to”, “agnès b” as “a-gu-ne-su-bi”, “MONC BLANC” as “mon-to-bu-ran-ku”, “T-fal” as “tei-fa-lu”.

 

In other words, less attention to Katakana in promoting alphabetical brand names is likely to result in mispronunciation among the relevant public in Japan as you can see from the examples.

What’s worse, it may give rise to tragedy that trademark registration for the alphabetical name is insufficient to force unauthorized entity to cease his use of a mark consisting of Katakana to represent correct pronunciation of the name due to dissimilarity of the marks.

Provided that trademark registration is solely composed of alphabetical words, pronunciation of the mark is construed based on the most natural, logical way to pronounce it.

In this regard, it was a bit surprise that the Supreme Court judged a word mark written in Katakana pronounced as “reeru-dyu-tan” is phonetically identical with a registered mark “L’Air du Temps” in Case 1998 (Gyo-Hi) 85. Undoubtedly the judgement was based on the facts that “L’Air du Temps” had become well-known as a brand of perfume and the registered mark had been advertised accompanying a Katanaka “reeru-dyu-tan” as well.

http://www.courts.go.jp/app/hanrei_en/detail?id=493

When we come across a word “L’Air du Temps” for the first time, little thought is given to call it “reeru-dyu-tan”. The most natural way to pronounce it is “lu-ear-dyu-ten-po-su” indeed.Thus, the Supreme Court judgement should not be considered to negate necessity of Katakana in avoiding mispronounced marks.

 

It is advisable to use and register a Katakana word representing correct pronunciation of brand name as well as the alphabetical letters, especially where the letters are unpronounceable to the Japanese and thus natural pronunciation is not what a brand owner expects the Japanese to call it.

How to decide similarity of composite marks

The Japanese Trademark Law sets forth:

– the use of a trademark similar to the registered trademark constitutes infringement of trademark right (Article 37(1)),

– trademark shall not be registered if the trademark is similar to another entity’s senior registered trademark (Article 4(1)(xi)).

It remains unclear from the articles how we can discriminate marks in dispute are similar or dissimilar.

Trademark examination guideline (TEG) plays a role to provide us with key factors in the assessment of similarity of marks.

[TEG Chapter 3, Part 10]

1.In judging the similarity of a trademark, decisive elements of the trademark, including its appearance, sound and concept need to be comprehensively taken into consideration.

2.A judgment on the similarity of a trademark needs to, with consideration given to a class of main users (for example, professionals, senior people, children, women, etc.) of goods or services on which the trademark is used, be made based on attentiveness usually possessed by the user, with consideration given to the state of transaction of the goods or the provision of the services.

The guidelines are set forth in conformity with precedent decisions of the Supreme Court.

In regard to composite marks, TEG enumerates seven cases and corresponding examples as follows.

 6.Concerning the similarity of a composite trademark composed of two or more elements, a judgment needs to be made based on the following among other things, with consideration given to the strength of a combination between its elements. However, this does not apply where such a trademark is judged clearly to produce a remarkably different appearance, sound and concept.

(1) A composite trademark having characters representing an adjective (characters indicating the quality, raw materials, etc. of goods or characters indicating the quality of services, the location of its provision, quality, etc.) is judged as similar to a trademark without the adjective as a general rule.

[Example]

“SUPER LION” v. “LION”,

“GINZA KOBAN” v. “KOBAN”,

“LADY GREEN” v. “LADY”

(2) A trademark composed of letters different in size is judged with respect to a group of letters identical in size as a general rule.

[Example]

“富士白鳥” v. “富士” or “白鳥”

“サンムーン” v. “サン” or “ムーン”

(3) A trademark composed of letters conspicuously separate apart from each other is judged with respect to a group of letters separate from others as a general rule.

[Example]

“鶴亀  万寿” v. “鶴亀” or “万寿”

(4) A trademark which, because of its long sound or its particularly conspicuous portion, may be simplified with a certain portion thereof is compared with other trademarks, in principle, with its portion picked up in its simplified form.

[Example]

“cherryblossomboy” v. “cherryblossom”,

“chrysanthemumbluesky” v. “kurisanshimamu” or “blue-sky”

(5) A trademark combining letters customarily used for the designated goods or designated services with other letters is compared with other trademarks with the customarily-used letters removed.

[Example]

“男山富士” v. “富士” for sake

“play guide shuttle” v. “shuttle” for arrangements for seats of entertainment facilities

 (6) A trademark combining another person’s registered trademark that is widely recognized in respect of the designated goods or designated services with other letters or figures, including one whose appearance in totality is well formed or one having a connection in concept, is judged as similar to that another person’s trademark, in principle, excluding however cases where the part of another person’s trademark has become an established word.

[Example]

“SONY” v. “SONYLINE” in respect of tape recorders

“L‘OREAL” v. “LOVE L‘OREAL” in respect of cosmetics

(7) A trademark composed of a trade name (including a trademark composed of an abbreviation of a trade name, as hereinafter applicable) having such characters as “Co.,” “K.K.” “Ltd.,” etc. customarily used as part of a trade name is judged with those characters removed as a general rule, irrespective of their position respective to the primary part of the trademark, either at its head or end.

 

In the meantime, the Supreme Court decision rendered in 2008 established general rule to grasp composite marks in its entirety in the assessment of similarity of mark.

 “Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to decide similarity of mark as a whole simply by picking out an element of the composite mark and then comparing such element with other mark, unless consumers or traders are likely to perceive the element as a dominant portion appealing its source of origin of goods/service, or remaining elements truly lack inherent ability to serve as a source indicator in view of sound and concept.”

 

Based on the above rule, composite mark “TSUTSUMINO-OHINAKKOYA” was deemed dissimilar to a word mark “TSUSTUMI” on the grounds that latter portion of “OHINAKKOYA” is admittedly distinctive.

 Recent disputes arising from similarity of composite mark are entirely in conformity with the Supreme Court decision. Namely, a composite mark consisting of two or more distinctive elements will put you on the fast track to registration

Trademark Abbreviations

A company should be mindful of how the public perceives and uses its trademarks in Japan.

Japanese is prone to abbreviate trademarks. Occasionally, the abbreviation has no resemblance to its original name.

For example, ABERCROMBIE & FITCH is popularly called “ABA-KURO” among general public in Japan. Likewise, DOLCE & GABBANA can be called “DOLU-GABA”. STARBUCKS COFFEE is known as “SUTABA”. TOMMY HILFIGER is called “TOMI-HIRU”.

Where a trademark is composed of five sounds or more, you should mind that general public in Japan gets to call the mark in abbreviation contrary to brand owner’s intention.

BMW is even called as “BI-EMU”.

Most popular name recognized in abbreviation is McDonald without doubt. We seldom call “McDonald” as it is. One of the most popular fast-food chains and one of the top franchises in the world has always been called “MAKUDO” or “MAC”.

A combination mark is an easy target for abbreviation as well.

BOTTEGA VENETA is call “BOTTEGA”. LUIS VUITTON is known as “VUITTON”.

Trademark abbreviations may serve as a barometer for well-recognition of the mark among general public in Japan. In the meantime, abbreviations or nicknames used by the public are not protected under the respective registrations given that they have no resemblance to the original names e.g., “ABA-KURO” and “DOLU-GABA”.

Using abbreviations, nicknames, and acronyms as trademarks may be appealing from a marketing perspective, however, trademark protection for an abbreviation has to be sought independently from the trademark protection that its extensive version might be already enjoying, and vice versa.

A company that seeks trademark protection for an abbreviation should abide by the standard trademark requirements.

Defensive mark

Article 64 of the Japanese Trademark Law stipulates definition and requirements for defensive mark registration.

“Where a registered trademark pertaining to goods is well known among consumers as that indicating the designated goods in connection with the business of a holder of trademark right, the holder of trademark right may, where the use by another person of the registered trademark in connection with goods other than the designated goods pertaining to the registered trademark or goods similar thereto or in connection with services other than those similar to the designated goods is likely to cause confusion between the said other person’s goods or services and the designated goods pertaining to his/her own business, obtain a defensive mark registration for the mark identical with the registered trademark in connection with the goods or services for which the likelihood of confusion exists.”

A trademark may be registered as a defensive mark with respect to dissimilar goods/services that are not covered by the primary registration, where the owner of the trademark can demonstrate that the mark has acquired remarkable prestige in relation to the goods/services on which the mark has been substantially used, and thus there is a likelihood of confusion that consumers would conceive a connection between those dissimilar goods/services and the registered owner.

Obtaining a defensive mark registration is seemingly a desirable way to protect a well-known, registered mark from infringement. At the outset, the owner can prevent the registration from challenging a non-use cancellation. Besides, there are provisions in the Japanese Trademark Law that allow the owner of a defensive mark to take action against a third-party for infringement of the mark by its use on dissimilar goods/services that are covered by the defensive mark registration. In the meantime, the  provision does not specify that owner may take action against a non-identical or deceptively similar mark by a third-party. In this respect, many of famous-mark owners hesitate to apply for a defensive mark registration. Since standard trademark registration provides a broader protection to compel third-party to cease an unauthorized use of similar mark as well, they feel less incentive to register a defensive mark in light of costly proceeding and a large volume of evidence. It is true that the owner has registered the mark as standard trademark by designating goods/services unrelated to their ordinary business.

Nevertheless, a defensive mark remains effective for famous-mark owners. It is largely because defensive mark registration signifies the mark to be certified well-known by the Japan Patent Office (JPO). Japanese well-known trademarks are posted for public review on the JPO website.

https://www2.j-platpat.inpit.go.jp/chomei/list_e.cgi?LIST_TYPE=ALL&ZUKEI=&HIT=0&ID=0&START=1&SIZE=50&STIME=147145037593765056623354

A defensive mark also serves to act as a blocking mechanism against junior applications that seek to take advantage of the reputation associated with the well-known mark.