How can a combination of descriptive words become a source indicator?

In a recent decision, the Appeal Board of Japan Patent Office (JPO) granted to protect a word mark “TOUGH CARRY” in relation to carts and trolleys of class 12.
[Appeal case no. 2017-7976]


As a result of substantive examination, the JPO examiner refused trademark application no. 2016-28871 for a mark “TOUGH CARRY” composed of descriptive words combination in relation to carts, trolleys, sleighs and sleds[vehicles], rickshaws, horse drawn carriages, bicycle trailers [Riyakah], and casting carriages of class 12 on the ground that the mark lacks distinctiveness under Article 3(1)(iii) of the Trademark Law. Examiner raised her objection based on the facts that a word of “TOUGH” means “strong and durable; not easily broken or cut”. “CARRY” means “to take or support from one place to another; convey; transport”. Besides, it is obvious that relevant consumers are familiar with both words. If so, consumers with an ordinary care will surely conceive the meaning of “being able to transport items with strong and durable capability” at the sight of trademark “TOUGH CARRY” when used on designated goods.

Appeal Board decision

In the meantime, the Appeal Board cancelled the examiner’s rejection and admitted registration of “TOUGH CARRY”.

The Board decided that, even if respective word, highly known among consumers, inherently lacks distinctiveness in relation to goods of class 12 and the entire mark gives rise to the meaning as examiner asserted, it does not mean the mark as a whole is just a direct and clear qualitative indication of specific goods.

On the case, the Board found, as a result of ex officio examination, no evidence to demonstrate the descriptive words combination of “TOUGH CARRY” is ordinarily used in transaction of carts and trolleys. Besides, there exists no circumstance to use the combination as a qualitative indication in relation to any other goods.

Consequently, it is groundless to reject the trademark “TOUGH CARRY” based on Article 3(1)(iii) since it does not give rise to any descriptive meaning in relation to the goods in question.

Occasionally, a trademark composed of descriptive words combination becomes controversial. Such disputes mostly focus on distinctiveness of the entire mark. In case the JPO found that combination of respective word is unique and remains suggestive in relation to disputed goods/service by taking account of transactional circumstance, the mark is eligible for registration regardless of descriptive meaning of each word.
In other words, it depends on competitor’s behavior and perception of relevant consumers whether a combination of descriptive words can be protected as a source indicator.

Masaki MIKAMI, Attorney at IP law – Founder of MARKS IP LAW FIRM

It is just a 3D shape of electronic baccarat shoe, or trademark?

In a lawsuit disputing adequacy of decision by the JPO Appeal Board (Appeal case no. 2015-907) to refuse the applied 3D mark (TM2014-5943, class 28), consisting of a three-dimensional shape of electronic baccarat shoe with the program enabling to reduce the chance of foreign cards and eliminate dealer mistakes, due to lack of  distinctiveness and secondary meaning, the IP High Court sustained the decision being appealed.
[Case no. Heisei28(Gyo-ke)10266,  Decision date: September 27, 2017]

Inherent distinctiveness of the 3D shape

Plaintiff, a Japanese manufacturer and distributor of the ANGEL EYE electronic baccarat shoe, asserted that the 3D shape of ANGEL EYE, being the first products in the industry, is not an essential shape to make it free for public use since no competitors have dealt with same type of product other than plaintiff so far. Besides, a fact that the 3D shape has been registered in the legal gambling countries, e.g. US, EU, AU, RU, Malaysia and NZ, will rather bolster necessity to allow exclusive right on the shape.

However, the Court opposed to plaintiff. “It is inadequate to allow plaintiff to use the 3D shape exclusively. Applied 3D mark can be perceived objectively as a general shape of electronic baccarat shoe aimed to fulfill its original function and produce aesthetic image. If so, it may disorder a fair marketplace to allow exclusive use to plaintiff just because of a first-to-file. A mere fact of trademark registrations in countries where the ANGEL EYE has been distributed is insufficient to admit trademark registration in our nation since the goods is yet to be distributed in Japan.” Accordingly, the Court refused Applied 3D mark based on Article 3(1)(iii).


Secondary meaning of Applied 3D mark

Plaintiff argued Applied 3D mark has already served to function as a source indicator by means of substantial use of the mark sine 2005. Plaintiff exported 11,481 units (sale proceeds: 2.7 billion yen) over the lase decade and has achieved 90 % market share in Macau, the world’s largest casino gambling hub.

In this respect, the Court ruled in favor of the JPO. As plaintiff admits, the shoe has not been manufactured for domestic use. Any evidence suggesting a high degree of recognition to Applied 3D mark in foreign countries is neither relevant nor persuasive. Unless plaintiff demonstrates that domestic consumers have become aware of such recognition, it is groundless to find Applied 3D mark would satisfy requisite of secondary meaning based on Article 3(2) of the Japan Trademark Law.

The case raises a question: What is a role of the Trademark Law where applied mark, being registered in foreign nations,  confronts with an insuperable refusal attributable to legal restrictions on domestic use of the mark?
Unsuccessful domestic registration prevents domestic company from utilizing the Madrid Protocol and protecting his/her vital brands on the global market in an effective and economical manner.  

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

JPO decided trademark “WHITNEY HOUSTON” is descriptive when used on music recordings

In a recent appeal decision, the Japan Patent Office (JPO) upheld examiner’s refusal and granted to protect trademark “WHITNEY HOUSTON” on the condition that the trademark does delete music recordings from goods designated under the International Registration (IR) no. 1204044. [Appeal case no. 2016-650045]

Whitney Houston

Whitney Houston, an American singer and actress, tragically died on February 9, 2012 in Beverly Hills, was one of the best-selling musical performers of 1980s and ‘90s and one of the most famous singers in the world undoubtedly.

International Registration

IR no. 1204044, registered in the name of The Estate of Whitney Houston on March 24, 2014, designates following goods in class 9, 16 and 25.

International class 9 –      Series of musical sound recordings; series of musical video recordings; downloadable musical sound recordings; downloadable music video recordings featuring music and entertainment; audiovisual recordings featuring music and entertainment; downloadable audiovisual recordings featuring music and entertainment; downloadable ringtones for mobile phones and wireless devices.
International class 16 –    Posters; concert and souvenir programs; calendars; song books.
International class 25 –    T-shirts; shirts; sweatshirts; hooded sweatshirts; hats; headwear.

JPO Initial Examination

At an initial examination proceeding, JPO examiner refused the trademark with respect to all goods in class 9 on the grounds that consumers can easily perceive or conceive the late Whitney Houston, an American famous singer from the applied mark “WHITNEY HOUSTON” written in a common font design. Besides, in a business to deal with music recordings, the title of a song or an album as well as name of performer or player are routinely indicated on goods or packages to show contents of it. Therefore, relevant consumers and traders at a sight of the applied mark used on designated goods in class 9 are just likely to conceive the goods contains music or performance by the late Whitney Houston. If so, IR no. 1204044 is subject to refusal based on Article 3(1)(iii) of the Trademark Law.
Furthermore, when the applied mark is used on music recordings unrelated to Whitney Houston, consumers will surely be in trouble since they expect the goods contains song or performance of the late Whitney Houston. If so, it should be refused for registration based on Article 4(1)(xvi) due to misconception of quality of goods.

Article 3(1)(iii)

Article 3(1) of the Trademark Law is a provision to prohibit descriptive marks from registering.
Section (iii) of the article aims to remove any mark merely or directly suggesting quality of goods and services.

“Article 3(1) 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;”

New Trademark Examination Guideline

Trademark Examination Guideline (TEG) pertinent to Article 3(1)(iii) provides that where a trademark is widely recognized by consumers as a name of a singer or of a music group in respect of goods “sound recorded magnetic tapes, sound recorded compact disks, phonograph records” or its equivalent, the mark is deemed to indicate the quality of the goods.

Likewise, where a trademark is recognized to clearly indicate specific contents of articles provided for use by a person to which the service is provided (“cine films,” “image recorded magnetic tapes,” “sound recorded magnetic tapes,” “recorded compact disks,” “phonograph records,” etc.) such as their classifications and types in respect of such services as the rental of “cine films” “image recorded magnetic tapes” “sound recorded magnetic tapes,” “recorded compact disks,” “phonograph records,” etc., is deemed to indicate the quality of a service.
1.Trademark “Japan Folksong Collection” in respect of a service “Rental of sound recorded compact disks”
2.Trademark “Suspense” in respect of a service “Rental of cine films”

Article 4(1)(xvi)

Article 4(1) of the Trademark Law is a provision to provide unregistrable trademarks.
Section (xvi) of the article aims to prohibit registration of any mark likely to mislead quality of goods or services.

“Article 4(1) Notwithstanding the preceding Article, no trademark shall be registered if the trademark:
(xvi) is likely to mislead as to the quality of the goods or services”

Appeal Decision

Since The Estate of Whitney Houston deleted all goods classified in class 9 from Japan, a designation country of IR no.1204044, after the initial refusal, the Appeal Board admitted registration of trademark “WHITNEY HOUSTON” with respect to remaining goods, namely, “Posters; concert and souvenir programs; calendars; song books” in class 16, “T-shirts; shirts; sweatshirts; hooded sweatshirts; hats; headwear” in class 25.

Comments from author

Result seems a bit of trick. It means the name of Whitney Houston functions as a source indicator when used on song books and apparel, but a mere descriptive indication when used on music recordings though her fame never changes depend on goods.
Having reviewed examination result of IR no. 1204044 at other designation countries by means of ROMARIN , the trademark confronted with the same refusal in Singapore.
Apparently, registrability of a famous singer name as trademark varies depend on jurisdiction, goods or services and whether he/she is alive or not.

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