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”.

Can shape of goods be protected under the Unfair Competition Prevention Law?

Imitation of training chopsticks

Plaintiff filed a lawsuit against defendant to cease to manufacture and distribute defendant’s training chopsticks in the name of “Deluxe Training Chopsticks” by alleging it constitutes confusion with, or imitation of plaintiff’s well-known training chopsticks in the name of “Edison Chopsticks” based on violation of the Unfair Competition Prevention Law.

chopsticks

 The IP High Court decision

In a dispute of imitation of training chopsticks, the IP High Court admitted Article 2(1)(i) of the Unfair Competition Prevention Law is interpreted to include shape of goods in the meaning of “another person’s goods or business by use of an indication of goods, etc. (which shall mean a name, trade name, trademark, mark, container or package, or any other indication of goods or trade pertaining to a person’s business)”, provided that the shape has acquired “secondary meaning” as a consequence of substantial use even if it is not aimed to serve as a source indicator.

 Article 2(1)(i) of the Unfair Competition Prevention Law

Article 2

(1) The term “unfair competition” as used in this Act shall mean any of the following:

(i) creation of confusion with another person’s goods or business by use of an indication of goods, etc. (which shall mean a name, trade name, trademark, mark, container or package, or any other indication of goods or trade pertaining to a person’s business; the same shall apply hereinafter) that is identical or similar to an indication of goods, etc. well-known among consumers used by said person, or assignment, delivery, display for the purpose of assignment or delivery, export, import or provision through a telecommunications line of goods bearing the such an indication of goods, etc.;

Secondary meaning for shape of goods

Besides, in the assessment of secondary meaning, the shape is required:

(1)   To contain a distinctive character distinguishable from other similar goods objectively, and

(2)   To be exclusively used by specific entity for a long period of time or published for advertisement extensively, and thus the goods gets known for a source indicator of the entity among relevant consumers

It should be noted that where the shape simply results from technical function and utility of the goods and leaves no other option to adopt an alternative configuration, such shape should not be protected under Article 2(1)(i) of the Unfair Competition Prevention Law.

In the meantime, where the shape leaves other option to adopt an alternative configuration, Article 2(1)(i) of the Unfair Competition Prevention Law is applicable on the condition that the shape meet above requirements, namely (1) distinctive character and (2) well-knownness.

 

Conclusion

Based on above rules, the IP High Court found that the shape of plaintiff’s Edison chopsticks evidently derives from technical function and utility since it serves directly for consumers to learn how to use chopsticks in a correct manner.

The IP High Court admitted the shape leaves other potion to adopt an alternative configuration, however, denied plaintiff’s argument in view of lack of distinctive character since Edison chopsticks consists of a common configuration with equivalent goods. (Heisei 28 Ne 10028 ruled on July 27, 2016)

The IP High Court refused a word mark “HOKOTABAUM” due to lack of inherent distinctiveness

In a dispute regarding distinctiveness of a word mark “HOKOTABAUM” in class 30 for goods “Baumkuchen”, a ringed, hollow cake that’s made on a spit with layer after painstaking layer of batter, a German traditional cake, the IP High Court upheld the decision of JPO negating distinctivenss of the mark and decided to refuse registration of the disputed mark (Heisei28 Gyo-ke 10109 ruled on October 12,22016).

 “HOKOTA” nominally corresponds to a name of the city located in Ibaraki Prefecture, north east of Tokyo. JPO considered that the mark “HOKOTABAUM” is a term combining city name of “Hokota” with an abbreviation of “Baumkuchen” and refused the mark based on Article 3(1)(iii) of the Trademark Law since it consists solely of a mark indicating, in a common manner, the place of origin, place of sale for goods.

Plaintiff argued that relevant consumers and traders will not recognize Hokota City as a place where Baumkuchen is produced or distributed for sale because the City is not known for confectionery or cakes as local industry.

 hokotabaum

However, the Court dismissed the argument by citing decision of the Supreme Court pertinent to Article 3(1)(iii) of the Trademark Law.

 The Supreme Court decision

Article 3(1)(iii) of the Trademark Law stipulates that any trademark may not be registered if the trademark 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.

The article aims to exclude trademark registration on the grounds that exclusive use of such trademark by specific entity is inappropriately detrimental to the public interest and such trademark lacks inherent distinctiveness due to general use in business, thus is unable to serve its function as a source indicator.

Besides, in order to admit the trademark as a place of origin or place of sale for goods, it is not necessary the goods in dispute is actually produced or distributed for sale in the geographical place. As long as relevant consumer or traders generally perceive likelihood of production or distribution for sale of the disputed goods in the place, it suffices for requirement.

 

The IP High Court dismissed plaintiff’s argument in accordance with the Supreme Court ruling since the fact whether relevant consumers or traders recognize Hokota City as a place of production or distribution for goods of Baumkuchen is irrelevant in adapting Article 3(1)(iii).

In assessment of general perception test, the Court questioned what relevant consumers or traders perceive when they see the word mark “HOKOTABAUM” used on “Baumkuchen produced in Hokota City”, and concluded that relevant public is likely to conceive Hokota City from the term “HOKOTA” in disputed mark.

 

Plaintiff also alleged other examples of trademark registration having similar configuration to the disputed mark in order to demonstrate inappropriateness of JPO decision and bolster adequateness of his assertion. In this respect, the IP High Court judged that Article 3(1)(iii) should be assessed on a case-by-case basis at the time of decision to trademark application respectively by taking into consideration of attentiveness usually possessed by the user and a state of transaction of the goods.

“ANNIVERSARY DIAMOND” versus “ANNIVERSARY”

The JPO Appeal Board ruled that

a senior trademark registration for the mark “ANNIVERSARY” in standard character designating jewelry in class 14 is unlikely to cause confusion with a junior mark “ANNIVERSARY DIAMOND” written in plain letters other than a letter “O” which was replaced with a diamond-ring device (see below), even if the mark is used on diamond rings in class 14[Fufuku2015-19812].


anniversary-diamond


The Appeal Board cancelled a refusal decision rendered by the JPO examiner on the grounds that:
(1) From appearance and pronunciation, the “ANNIVERSARY DIAMOND” logo can be perceived as one mark in its entirety. Besides, both terms of “ANNIVERSARY” and “DIAMOND” are quite familiar with relevant public in Japan and thus concept of “ANNIVERSARY DIAMOND” can be easily conceived from the combination.
(2) Due to the configuration, it must be appropriate to consider that the logo just gives rise to its pronunciation and meaning as a whole.
(3) Therefore, the refusal decision based on the assumption that the term of “ANNIVERSARY” plays a dominant role in the logo made a factual mistake and should be cancelled consequently.

Seemingly, above conclusion is not coincident with the Trademark Examination Guidelines (TEG) criteria as below.

Chapter III, Part 10 of TEG provides that:
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.

In this respect, as long as the junior mark designates diamond rings in class 14 and the device depicted on the term “DIAMOND” further impresses the concept of diamond rings in mind of consumers, the portion of “DIAMOND” should be considered descriptive. Otherwise, any combined mark composed of registered mark and a generic term pertinent to the designated goods is deemed dissimilar to the registered mark.

I suppose the Board just aimed to declare narrower scope of right where trademark consists of a dictionary word commonly used to the public.

Registrability of two alphabetical letter trademarks in Japan

According to Article 3(1)(v) of the Japanese Trademark Law,

Any trademark solely consisted of a very simple and common mark may not be registered.

 Trademark Examination Guideline(TEG) pertinent to the article (Chapter I, Part 7) specifies that:

Trademarks composed of (a) one or two alphabetical letter, (b) two alphabetical letters hyphened, or (c) one or two alphabetical letter preceded or followed by a term representing business entity, e.g. “Co.” “Ltd.”, are not registrable on the grounds of Article 3(1)(v).

 In the meantime, trademarks consisted of (a) two alphabetical letters combined with “&”, (b) two alphabetical letters depicted in monogram, (c) Japanese katakana characters transliterating two alphabetical letters, or (d) two alphabetical letter represented in a unique design do not fall under the article.

 http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/tt1302-002/1-7.pdf

You had better note that TEG admits to register Japanese katakana characters transliterating two alphabetical letters. That means, even if alphabetical letter trademark would fail to register due to the article, you may have an option to register transliteration of the mark in Japan.
Consequently, one or two alphabetical letter trademarks in standard character, including acronyms and abbreviations are under normal circumstances not registrable.
 As an exception, provided that the producer so effectively markets the product with the mark that consumers come to immediately associate the mark with only that producer of that particular kind of goods and thus one or two alphabetical letter trademarks attain acquired distinctiveness, the marks are entitled to trademark protection on the basis of Article 3(2).

 

Article 3(2) of the Japanese Trademark Law stipulates that:

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 the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person.