Never trademark “BON GOÛT” in food-service business

The Appeal Board of the Japan Patent Office (JPO) decided to register a term of “bon goût” in relation to various foods of class 30 and restaurant service of class 43 by finding that the term is deemed a coined word in Japan.
[Appeal case no. 2017-7985]

“BON GOÛT”

Disputed mark (see below), written in a common font design, was filed in December 14 by designating various foods of class 30, e.g. buns and breads, confectioneries, hamburgers, pizza, hot dogs, spices, noodles, pasta, coffee, tea, and restaurant service, rental of cooking apparatus and microwave ovens and others of class 43 in the ultimate.

Lack of distinctiveness

JPO examiner entirely refused the mark due to lack of distinctiveness based on Article 3(1)(iii) of the Trademark Law. In refusal decision, examiner asserted the term of “bon goût” is a French term to mean “good taste” in English.

If so, relevant consumers and traders are likely to conceive the term in association with quality of goods and services.

Besides, given the mark is written in a common font design, it shall be objectionable under Article 3(1)(iii) since the mark is solely composed of elements just to indicate, in a common manner, 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.

 

Appeal Board decision

In the meantime, the Appeal Board overruled examiner’s rejection and granted registration of “bon goût”.

The Board admitted the terms of “bon” and “goût” are French words meaning good and taste respectively by referring to French dictionary, but, in contrast, considered a combined word of “bon goût” is unfamiliar to Japanese public with an ordinary care.
If so, disputed mark shall be deemed a coined word in its entirety and relevant consumers are unlikely to conceive any specific meaning from the mark.

Besides, the Board held, as a result of ex officio examination, there found no circumstance to convince “bon goût” is ordinarily used as a mere descriptive indication in food-service business.

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


This case gives us a lesson.
Descriptive term in foreign language has a potential risk to be registered in Japan if we are unfamiliar to the term.

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

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.