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

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.