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.
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