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.

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.