Trademark registration for Kikkoman’s Soy sauce 3D Bottle

In October 11, 2016, Kikkoman Corporation, the world’s leading producer of soy sauce, filed an application for trademark registration at the Japan Patent Office (JPO) for the following three-dimensional colored mark for soy sauce in class 30.

Red-capped Kikkoman soy sauce dispenser

Iconic red-capped Kikkoman soy sauce dispenser was introduced in 1961 and has been in continuous production ever since. It was developed by Kenji Ekuan, a Japanese Navy sailor former naval academy student who dedicated his life to design when he left the service. Its unique shape took three years and over a hundred prototypes to perfect, but the teardrop design and dripless spout have become a staple of restaurant condiments all around the world. The bottle’s design hasn’t changed over the past 50 years.

JPO Examination/Acquired distinctiveness

The JPO examiner initially notified her refusal due to a lack of inherent distinctiveness in relation to say sauce.

In a response to the office action, Kikkoman argued acquired distinctiveness of the 3D bottle arising from uniqueness of its shape and substantial use for over five decades.

According to news release from Kikkoman, over 500 million of the bottles have been sold since the design was first introduced and distributed in approximately a hundred countries worldwide. Red-capped Kikkoman soy sauce dispenser has already been registered as 3D mark in US, EU, Ukraine, Norway, Russia, Australia.

In March 30, 2018, the JPO granted trademark registration based on Article 3(2) of the Trademark Law by finding acquired distinctiveness of the 3D color mark as a source indicator of Kikkoman.
[TM Registration No. 6031041]

Apple failed to block Swatch’s attempt to acquire the trademark for Steve Jobs’ catchphrase ‘one more thing’

The Swiss watchmaker Swatch’s effort to acquire the trademark for “SWATCH ONE MORE THING” has run in to opposition from Apple, which argues the phrase ‘one more thing’ is closely associated with the software giant’s founder Steve Jobs. During Apple press events, Jobs was known to precede new product announcements and introductions with the phrase “there is one more thing” in his keynote addresses. The “one more thing” prelude became a fixture at Apple events.

SWATCH ONE MORE THING

The watchmaker has taken out an international trademark on the phrase “SWATCH ONE MORE THING”. The trademark was registered under IR no. 1261460 with the World Intellectual Property Organization (WIPO) in May 22, 2015 by designating more than 40 countries including Japan and various goods in class 9, 14 as follows.

Class09 Apparatus for recording, transmission and reproduction of sound or images; electronic payment processing apparatus, apparatus for processing cashless payment transactions; magnetic recording media, sound recording disks; compact disks, DVDs and other digital recording media; apparatus enabling the playing of compressed sound files (MP3); calculating machines and data processing equipment, software; game software for mobile telephones, for computers and for digital personal stereos; electronic game software for mobile telephones, for computers and for digital personal stereos; computers, portable computers, handheld computers, mobile computers, personal computers, wrist computers, electronic tablets and computerized and mobile devices, digital personal stereos, mobile telephones and new-generation mobile telephones featuring greater functionality (smartphones); telecommunication apparatus and instruments; apparatus for recording, transmission, reproduction of sound or images, particularly mobile telephones and new-generation mobile telephones incorporating greater functionality (smartphones); hand-held electronic apparatus for accessing the Internet and sending, receiving, recording and storing short messages, electronic messages, telephone calls, faxes, video conferences, images, sound, music, text and other digital data; handheld electronic apparatus for wireless receiving, storing and transmitting of data or messages; handheld electronic apparatus for monitoring and organizing personal information; handheld electronic apparatus for global positioning [GPS] and displaying maps and transport information; handheld electronic devices for detecting, monitoring, storing, surveillance and transmitting data relating to the user activity, namely position, itinerary, distance traveled, heart rate; covers for computers, portable and mobile telephones; optical apparatus and instruments, particularly spectacles, sunglasses, magnifying glasses; cases for spectacles, magnifying glasses and sunglasses; batteries and cells for computers and electronic and chronometric apparatus. 

Class14 Precious metals and their alloys and goods made of these materials or coated therewith included in this class, namely figurines, trophies; jewelry, namely rings, earrings, cufflinks, bracelets, charms, brooches, chains, necklaces, tie pins, tie clips, jewelry caskets, jewelry cases; precious stones, semi-precious stones; timepieces and chronometric instruments, namely chronometers, chronographs, clocks, watches, wristwatches, wall clocks, alarm clocks as well as parts and accessories for the aforesaid goods, namely hands, anchors, pendulums, barrels, watch cases, watch straps, watch dials, clockworks, watch chains, movements for timepieces, watch springs, watch glasses, presentation cases for timepieces, cases for timepieces.

Apple filed an opposition

Immediately after the JPO admitted granting protection to the trademark, Apple filed an opposition in May 19, 2015 on the grounds that the trademark violates main paragraph of Article 3(1) as well as 4(1)(vii), 4(1)(x), 4(1)(xv), and 4(1)(xix) of the Japan Trademark Law.

Main paragraph of Article 3(1)

Main paragraph of Article 3(1) demands applicant to have used or intend to genuinely use applied mark. Where examiners have “reasonable doubts” about the use of a trademark or intention to use a trademark by the applicant on the designated goods, the examiners shall reject the application based on the ground. Likewise, the trademark is subject to cancellation if opposition board has convinced of such reasonable doubts during opposition procedure.
Apple claimed that Swatch filed the trademark with a malicious intention to hinder the business of opponent since Swatch has been aware of the phrase ‘one more thing’ used by Steve Jobs. Besides, Swatch has not used the trademark. If so, it is obvious that Swatch will not intend to use the mark on designated goods.

Article 4(1)(vii)

Article 4(1)(vii) prohibits a trademark which is likely to cause damage to public order or morality from registering.
Apple claimed that the trademark should be subject to cancellation based on the ground as long as Swatch, having been aware of the phrase ‘one more thing’ used by Steve Jobs, filed the trademark with a malicious intention to hinder the business of opponent.

Article 4(1)(x)

Article 4(1)(x) prohibits to register a trademark which is identical with, or similar to, other entity’s well-known mark over goods or services closely related with the entity’s business.
Apple claimed that the dominant portion of trademark “SWATCH ONE MORE THING” is similar to Steve Jobs’ catchphrase ‘one more thing’, since the phrase has become famous among relevant consumers as admitted in administrative decision of the Turkish Patent Office. Besides, designated goods in class 9 are closely related with Apple products.

Article 4(1)(xv)

Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.
Apple cited administrative decision of the Turkish Patent Office on the claim as well and alleged that there exists a likelihood of confusion between the applied trademark and Steve Jobs’ catchphrase ‘one more thing’ in due course.

Article 4(1)(xix)

Article 4(1)(xix) prohibits to register a trademark which is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.
Apple disputed on Swatch’s unfair purpose to free-ride prestigious fame bestowed on the Steve Jobs’ catchphrase as well as to harm or depreciate the value of goodwill by means of trademark dilution.

Opposition Board decision

Opposition Board dismissed Apple’s arguments.

Firstly, the Board denied famousness of the phrase ‘One more thing’ as a source indicator of Apple partly because the phrase can be commonly used in daily conversation and Apple failed to produce evidences demonstrating the phrase is used as a source indicator other than verbal presentation by Steve Jobs.
Secondly, in the assessment of trademark similarity, the Board considered “SWATCH” plays an important and dominative role as a source indicator by taking into consideration of the facts that SWATCH becomes famous among consumers in connection with goods of class 9 and less distinctiveness of the phrase ‘ONE MORE THING”. If so, it should be concluded that  because of presence or absence of “SWATCH” both marks are distinctively dissimilar from visual, sound and conceptual point of view.

Based on the foregoing, the Board decided the opposed mark is not objectionable under Article 4(1)(x), (xv) and (xix) of the Trademark Law due to less recognized awareness of the phrase ‘One more thing’ as a source indicator of Apple and dissimilarity of both marks. The Board also considered that previous trademark disputes between the parties would not suffice to decide Swatch had a malicious intention to hinder the business of opponent. Therefore, the opposition is groundless to conclude the opposed mark is likely to cause damage to public order or morality under Article 4(1)(vii).
Likewise, it is insufficient to conclude that Swatch lacks an intention to use the opposed mark not-too-distant future given the designated goods in class 9, 14 are related to wristwatches to a certain extent (Main paragraph of Article 3(1)).

[Opposition case number: 2016-685012, Decision date: April 20, 2017]

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

3D shape of Zippo lighters registrable when a lighter lid open, but unregistrable when closed

In an appeal to the refusal decision against trademark application no. 2014-8964 for a three dimensional shape of box-type lighter in connection with lighters of class 34 filed by ZIPPO Manufacturing Company (US), the Appeal Board of Japan Patent Office (JPO), after stating the application impermissibly contains two 3D marks, namely Shape A with a lighter lid closed and Shape B with a lighter lid open, ruled as follows.

Shape A
Shape A can be easily perceived as a shape of box-type lighter with the lid closed in connection with the goods in dispute. Besides, as a matter of fact, similar lighters are commercially produced and distributed in general. If so, relevant traders and consumers at the sight of Shape A  are likely to conceive the shape as a mere indication of the lighter.  Thus, Shape A is objectionable based on Article 3(1)(iii) of the Trademark Law since the shape solely consists of a shape commonly used on lighters.

Even if Shape A corresponds to the 3D shape of “ZIPPO Brushed Chrome 200” substantially produced and promoted by applicant, it is questioned whether Shape A serves to function as a source indicator since presumably traders and consumers distinguish applicant’s lighters by the “ZIPPO” letter marked at the bottom of the lighter where the lid remains closed. Accordingly, Shape A is unregistrable based on Article 3(2) as well.

Shape B
Three dimensional shapes cited for refusal during initial examination are all related to box-type lighters with a lid closed. As long as there shows no reference to lighters with a lid open in the refusal decision, it should be construed that the initial examination just questioned Shape A, not B.

Since applicant amended to delete Shape A from the application, the initial decision lacks legal ground to refusal the applied mark of Shape B based on Article 3(1)(iii) accordingly.

As a conclusion, the Board admits to register the applied 3D mark consisting of Shape B in connection with lighters.
[Appeal case no. 2016-2368]


It is worthy to note that in an attempt to register 3D shape of goods, a hidden shape is considered an independent mark from the shape perceivable from appearance of the goods.
Besides, the JPO allowed to delete one of 3D marks depicted in the application document without detrimental effect to the applicant despite that the Trademark Law prohibits amendment of mark amounting to change its gist.

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

Can shape of musical instruments play a role of trademark?

In a dispute of registrability to a unique three-dimensional shape of electric violins, the Appeal Board admitted protection of the mark based on distinctiveness acquired by means of substantial publicity of the violins [Appeal case no. 2016-1859].

YAMAHA Corporation applied for 3D shape of electric violin promoted under the name of “SILENT Violin” by designating electric violins of class 15 on September 24, 2014 [TM application no. 2014-80685].

 


Initial examination

Examiner rejected the applied mark by stating that;

“Unsymmetrical appearance of the applied mark can still be perceived as a three-dimensional shape of electric or electronic violins in its entirety.According to information retrieved from the websites, unsymmetrical violins have been distributed with an attempt to aesthetic appearance or weight saving.Admittedly, the applied 3D shape contributes to enhance function or aesthetic appeal of electric violins, however, the shape is deemed equivalent to a mark solely consisting of the shape of goods in a common manner to the extent that relevant traders and/or consumers are unlikely to recognize the shape as a source indicator. Hence, the mark is subject to Article 3(1)(iii) of the Trademark Law.”

Article 3(1)(iii) of the Trademark Law

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:

(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;


Appeal Trial

In this regard, the Appeal Board also sustained examiner’s decision and dismissed applicant argument of inherent distinctiveness of the applied 3D shape.

In the meantime, the Board granted protection of the 3D shape due to acquired distinctiveness based on Article 3(2) of the Trademark Law.

Article 3(2) of the Trademark Law

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.

Acquired distinctiveness

YAMAHA Corporation has distributed electric violins “SILENT Violin” with a configuration of applied mark since 1997.
http://usa.yamaha.com/products/musical-instruments/strings/silentviolins/
The 3D shape has been continuously promoted in musical instruments magazines, a website and catalogues of applicant, and newspapers in a manner that readers can be attracted by its unique design. Winning various design awards and appearing in school textbooks as an example of industrial designs bolster remarkable reputation to the shape as well. Annual sale of “SILENT Violin” exceeding 100 million yen nationwide for last fifteen years is extremely higher than competitors.

Based on the foregoing, the Board stated;

It should be concluded that as a result of continuous and substantive use of the applied 3D mark since 1997, relevant consumers casting a glance at the mark are likely to conceive it as a source indicator of applicant business when used on electric violins.
Thus, the applied mark is eligible for registration in connection with electric violins of class 15 based on Article 3(2) of the Trademark Law.


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

 

 

Chemical Equation can function as a trademark?

The Appeal Board of JPO dismissed examiner’s rejection and admitted registration of a below mark appearing to be a chemical equation in association with the goods of alcoholic beverages, namely, distilled rice spirits, fruit wines, sake substitute, Japanese white liquor, Sake, Chinese liquors, Japanese Shochu-based beverages, Naoshi [Japanese liquor], Flavored tonic liquors, Japanese sweet rice-based mixed liquor, and western liquors in class 33. [Appeal case no. 2016-17500]

[Mark in question]


Initial examination

At an initial examination, the JPO examiner refused the mark [TM application no. 2015-111054] based on Article 3(1)(vi) of the Trademark Law by concluding that the mark, representing a chemical equation to generate ethyl alcohol(C2H5OH) and carbon dioxide(CO2) from glucose(C6H12O6) as a whole, can be perceived as a mere indication to appeal the goods produced by alcoholic fermentation in the mind of consumers with an ordinary care when used on alcoholic beverages in class 33.


Article 3(1)(vi) of the Trademark Law

Article 3(1)(vi) is a comprehensive provision aiming to prohibit any mark lacking inherent distinctiveness from being registered.

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:
(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.


Baord decision

In the meantime, the Appeal Board stated that ordinary consumers were unlikely to perceive the mark as chemical equation to represent alcoholic fermentation generated from glucose. Besides, there find no circumstance to show the chemical equation has been used frequently as a result of ex officio investigation. Thus, it is groundless to conclude the chemical equation lacks inherent distinctiveness in association with goods of class 33. Provided that the mark does not fall under Article 3(1)(vi), the initial examination loses its ground to refuse and should be dismissed accordingly.


Apparently, the Board paid an excessive attention to circumstance whether chemical equation or chemical formula are commonly used on alcoholic beverages. Even if ordinary consumers are not accustomed to such chemical expressions, I suppose, the JPO should refrain from admitting inherent distinctiveness of the expressions since nobody will consider it as a source indicator in fact.

 

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

Converse unsuccessful in obtaining 3D trademark protection of Chuck Taylor All Star sneakers

The Appeal Board of Japan Patent Office (JPO) decided to reject protection of a three-dimensional shape of Chuck Taylor All Star sneakers in connection with “sneakers” in class 25 (TM application no. 2014-79258) based on Article 3(1)(iii) of the Trademark Law by stating that the applied 3D mark, solely consisting of a shape commonly used on High Top Sneakers, is expectedly perceived as shape aiming to enhance aesthetic appeal in the mind of consumers and deemed inherently descriptive accordingly.
[Appeal case no. 2015-14749, January 18, 2017]

The Board admitted Chuck Taylor All Star sneaker as well as its name have become well-known as a source indicator of classic High Top Sneaker based on the facts that (i) Converse, a US merchant, has consecutively promoted the sneaker since 1917 without material change of the design, (ii) 5.2 million pairs of the sneaker were purchased in Japan since April 2008 at least, and (iii) it was continuously featured on newspapers and magazines.
However, the Board concluded it remained unclear whether the applied 3D shape has become well-known in itself and consumers are unlikely to recognize the shape as a source indicator on the following grounds.

  • Shape of goods essentially results from functional or aesthetic appeal. Unlike in the case of trademark depicted in the flat such as letter, figurative element, or symbols, consumers are neither accustomed nor likely to recognize 3D shape of goods as a role to indicate its source in general.
  • Similar sneakers have been distributed by many suppliers, e.g. GU, LEVIS, ADIDAS, RALPH LAUREN, PUMA, NIKE, MOONSTAR. As long as the shape already becomes a standard design of High Top Sneakers among competitors, granting exclusive protection to the applied 3D mark may disorder the status quo undesirably. Even if similar sneaks turn out to be imitations or counterfeits of Chuck Taylor All Star sneaker as applicant argued, unless applicant takes remedial actions to cease the products, the argument is less persuasive and inadmissible.
  • According to market survey conducted at Tokyo, Aichi and Osaka involving 1,500 interviewees, more than half of them could not perceive the applied 3D mark as Chuck Taylor All Star sneaker. 60% perception among primary consumers from age 10 to 49 is still insufficient.

It is undeniable that applicant neglected similar sneakers by numerous competitors for years and the circumstance adversely affected to the decision as market survey did in contradiction to its expected role.
Timing is of the essence to protect 3D shape of goods successfully.  

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

RED TAB jeans position mark is subject to cancellation in association with goods not having “a back pocket of trousers”

The opposition board of JPO decided to partially cancel trademark registration no. 5807881 for RED TAB position mark (shown in below) covering goods in Class 25 owned by EDWIN KK on the grounds that the registration fails to conform to the requirements provided in the main paragraph of Article 3 (1) of the Trademark Law.


The position mark in dispute was filed on April 1, 2015 by designating the goods of “Trousers; long trousers; short trousers; jogging pants; sweat pants; ski pants; nightwear; pajamas; Japanese sleeping robes; underwear; drawers and underpants; panties, shorts and briefs; clothes for sports” in class 25 and registered on November 20, 2015 as it is.

In filing a position mark, it is mandatory to specify position of the mark in connection with goods applicant seeks to register.

Disputed registration specifies the mark as follows.

The trademark for which registration is sought (hereinafter referred to as the “trademark”) is a Position mark in which a position affixed to the trademark is specified, the trademark is affixed to the upper left part of a back pocket of trousers, and consists of a red rectangular tab figure in which Alphabetic characters of “EDWIN” are indicated. Incidentally, description of only a pocket and a tab figure is an enlarged drawing of a portion for obviously describing a mark affixed to the position. Further, broken lines represent one of the shapes of goods, and do not represent a component constituting the trademark.

The main paragraph of Article 3 (1) requires an applied trademark should be either currently in use or planned to use. Opponent, EVISU JAPAN LIMITED, did not contend this respect at an initial opposition brief, however, the Board raised the ground as a result of ex-officio examination in accordance with Article 43-9 (1) of the Trademark Law.

The Opposition Board notified the ground and ordered EDWIN to respond it if unacceptable. But EDWIN did not respond to the notification.

Based on the foregoing, the Board concluded:

it cannot be conceived the mark is used in “Night gowns; Negligees; Japanese sleeping robes; bathrobes; other nightwear of which trousers have no back pocket; undershirts; corsets; chemises; slips; brassieres; petticoats; other underwear of which trousers have no back pocket; anoraks; karate suits; sports over uniforms; kendo outfits; judo suits; headbands; wind-jackets; wristbands; other cloths for sports of which trousers have no back pocket, of the designated goods, and it cannot be recognized that the mark is a trademark to be used in connection with goods pertaining to the business of the applicant, and hence the mark does not meet the requirements of the main paragraph of Article 3(1) of the Trademark Law.


Evidently, this is a first cancellation to position mark which becomes registrable under the New Trademark Law effective from April 1, 2015.


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

How to avoid a descriptive mark from being refused by JPO

The trademark law prohibits any mark incapable of serving as a source indicator from being registered under Article 3 (1).

Article 3(1) of the trademark law

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.

How to overcome refusal under Article 3(1)

We have three options to overcome the refusal under Article 3(1).

Option 1: Opposing to examiner’s assertion and dispute inherent distinctiveness.

Examiner often withdraws a refusal if we could convince the examiner of inherent distinctiveness in a response. Mostly, where applied mark is composed of two or three words, it is worthy of arguing distinctiveness of the mark in its entirety even though respective word is deemed descriptive.

 

Option 2: Arguing acquired distinctiveness of applied mark if applicant has substantial used of the mark.

A mark having functioned as a source indicator resulting from extensive and substantial use can be exceptionally registered under Article 3(2) of the trademark law regardless of descriptive meaning of the mark.

Article 3(2)
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 thetrademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person.

 

Option 3: Asserting a unique appearance of the mark even if admittedly the mark itself is descriptive without such appearance.

If applied mark contains figurative elements or depicts word(s) with an unfamiliar font design, it is still possible to overcome the refusal since Article 3(1) is applicable to a mark depicted “in a common manner”.

In other words, descriptive term(s) written in an uncommon manner can be registered regardless of original meaning of the mark.

Needless to say, it is not allowed to amend font design of applied mark during examination based on Article 16-2. Therefore, third option should be taken into consideration prior to filing an application.

Article 16-2(1)
Where an amendment made to the designated goods or designated services, or to the trademark for which registration is sought as stated in the application, is considered to cause any change of the gist thereof, the examiner shall dismiss the amendment by a ruling.

 

1187hirai%e4%bf%ae%e6%ad%a3003_2Masaki MIKAMI – Attorney at IP Law, Japan
MARKS IP LAW FIRM

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.

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.