“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”.

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.