Trademark Law Amendment in Japan: Introduction on Registering Nontraditional Marks

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1 Trademark Law Amendment in Japan: Introduction on Registering Nontraditional Marks By Tomoya Kurokawa Tomoya Kurokawa is a Japanese patent attorney and vice president of SOEI Patent & Law Firm in Tokyo, Japan. He specializes in trademark, industrial design, and IP litigation. He can be reached at kurokawa@soei-patent.co.jp. The Japanese Trademark Act was amended in 2014, and came into force on April 1, This amendment mainly introduces a registration system for nontraditional trademarks, such as sound, color, motion, hologram, and position marks. What Are Nontraditional Marks? This article will introduce how the scope of registrable trademark has expanded under the amended law by comparing the definition of trademark under the old law and amended law and explain how to identify nontraditional trademarks in a trademark application under the Examination Guidelines. Finally, how applicants have used the registration system of nontraditional trademarks up to now will be discussed by showing statistics on applications of nontraditional trademarks, examples of nontraditional trademarks filed under the amended law, and examples of nontraditional trademarks granted under the amended law. Definition of Trademark under the Old Law and Amended Law Under the old trademark law before April 1, 2015, trademark was defined as any characters, figures, signs, or three-dimensional shapes, or any combination thereof, or any combination thereof with colors. Under this definition, one could obtain a registration for not only word marks and device marks, but also for three-dimensional marks. But one couldn t obtain a registration for sound marks, color marks, motion marks, hologram marks, and position marks. However, under the amended trademark law effective as of April 1, trademark is defined as being: (1) recognizable by human perception, and (2) comprises (a) characters, figures, signs, three-dimensional shapes, or colors, or (b) any combination thereof, or 1

2 (c) sounds, or (d) other matters designated by Cabinet Order. Under the definition, sound marks, color marks, motion marks, hologram marks, and position marks can be registered if they meet other requirements such as distinctiveness and dissimilarity with respect to prior marks. Here, a motion mark is considered as a consecutive movement of characters, figures, and/or signs. That is the reason why motion marks are considered to be within the definition of trademark. Also, a hologram mark is considered a set of characters, figures, and/or signs. That is the reason why hologram marks are considered to be within the definition of trademark. Further, a position mark is designated by the Cabinet Order as a registerable trademark. That is the reason why position marks are considered to be within the definition of trademark. Currently, texture marks, taste marks, and fragrance marks are outside the scope of the definition of trademark. However, the definition under the amended trademark law leaves sufficient space for other types of nontraditional trademarks such as texture marks, taste marks, and fragrance marks. Because texture, taste, and fragrance are recognizable by human perception (satisfying part (1) of the definition of trademark ), they will be within the scope of definition in the future if the Cabinet Order designates them as registrable trademarks (satisfying part (2)(d) of the definition of trademark ) without law amendment. How to Identify Nontraditional Trademarks under the Examination Guidelines Sound Marks A sound mark in an application should be identified with a musical score as shown in figure 1. Words such as JPO can be included if any. Musical scores of multiple instruments, as shown in figure 2, are also allowed. If it is difficult to describe the sound mark in a musical score, the applicant can identify the sound mark by providing an explanation, e.g., After the sound of hands clapping twice, the meowing of a cat is heard. Total length of these sounds is three seconds. In both cases, the applicant has to file sound data for the sound mark in MP3 format on compact disc after filing the application. Color Marks A color mark in an application should be identified with a specimen and an explanation. For color marks with a single color, e.g., the specimen shown in figure 3, the explanation might read: It consists solely of red (RGB combination: R255, G0, B0). For color marks with multiple colors, the explanation might read: It consists of a combination of red (RGB combination: R255, G0, B0), blue (RGB combination: R0, G0, B255), yellow (RGB combination: R255, G255, B0), and green (RGB combination: R0, G128, B0). The combination ratios of the colors are, from the top to the bottom, 50% red, 25% blue, 15% yellow, and 10% green. Another option when filing a color mark is to identify the portion of the designated good and its color(s). The applicant could file a color mark application providing a specimen with 2

3 an explanation such as: The portion of the grip of knife is red (RGB combination: R255, G0, B0). Broken lines are intended only to show an example of the shape of the product, and not elements of the mark. Motion Marks Motion marks should identify an element that constitutes the motion mark and its movement as time proceeds with a specimen and an explanation. For example, the applicant could identify the motion mark with a single figure including the element that constitutes the motion mark and its movement as time proceeds as shown in figure 4. In this case, the explanation of the mark could be: It shows a bird flying from the lower left to the upper right along the dashed line. This movement continues for three seconds in total. The dashed line in the drawing is not an element of the trademark. The applicant can also identify the motion mark using multiple figures featuring the element that constitutes the motion mark, where sets of the multiple figures show its movement as time proceeds as shown in figure 5. In this case, the explanation of the mark could be: It shows a bird flapping its wings and flying from the lower left to the upper right as shown in frame 1 through frame 5. This movement continues for three seconds in total. The numbers displayed in the lower right corners of each figure indicate the sequence of the figures and are not elements of the trademark. Hologram Marks Hologram marks should identify how the mark changes its state based on visual effect. For example, the applicant could identify the hologram mark by showing each state of the mark as seen from each angle, as shown in figure 6. In this case, the explanation of the mark could be: When viewed from the left it appears as shown in frame 1, when viewed from the front it appears as shown in frame 2, and when viewed from the right it appears as shown in frame 3. The numbers displayed in the lower right corners of each figure indicate the sequence of the figures and are not elements of the trademark. Position Marks Position marks should identify a mark element that constitutes the position mark and on which portion of the good the mark element is attached. For example, the applicant could identify the position mark shown in figure 7 (blue circle) with an explanation such as: The mark is put on the lower side portion of a golf bag. Broken lines are intended only to show an example of the shape of the product, not elements of the mark. Examples of Nontraditional Marks Filed and Granted under the Amended Law Statistics Table 1 shows the number of nontraditional trademark applications filed between April and August There was a great number of applications in April (especially April 1), followed by a substantial number of applications for sound marks, color marks, and position marks every month thereafter. In contrast, there have not been so many applications for motion and hologram marks. 3

4 April May June July August Total Sound Color Position Motion Hologram Sound Marks Application No was filed by Nokia for class 9 (telephones, etc.) with musical score without words as shown in figure 8. We can hear the sound as a ringtone on mobile phones. Application No was filed by Yahoo! for class 42 (providing search engines for the Internet, etc.) with musical score and words as shown in figure 9. Application No was filed by Intel for class 9 (microprocessors, etc.) with musical score of multiple instruments without words as shown in figure 10. We can hear the sound in TV commercials for computers and promotional videos for computers in electrical appliance stores in Japan. Application No was filed by Dainihon Jochugiku for class 5 (mosquito-repellent incenses, etc.) with the explanation: The sound of fireworks ( Pang, para, para, para ) is heard. Total length of these sounds is 3 seconds. We can hear the sound in TV commercials for katori-senko, a type of mosquito-repellent incense, in Japan. Color Marks Application No was filed by Hato Bus for class 39 (bus transport, etc.) as shown in figure 11. Hato Bus offers a wide variety of bus tours around Tokyo; we can see many yellow painted buses around Tokyo railway station and various sightseeing locations in and around the capital. Application No was filed by Tombow Pencil for class 16 (stationery) as shown in figure 12. Tombow Pencil uses this blue, white, and black tricolor design especially for their eraser products. Application No was filed by Christian Louboutin for class 25 (heels for women) as shown in figure 13. The application includes the explanation: The portion of the sole of these women s high heels is red (pantone TP). Broken lines are intended only to show an example of the shape of the product, and not elements of the mark. Motion Marks Application No was filed by Unicharm for class 5 (disposable diaper for adults, etc.) as shown in figure 14. We can see this moving image in TV and web commercials for disposable diapers for adults in Japan. 4

5 Hologram Marks Application No was filed by Sumitomo Mitsui Card for class 36 (issuance of gift cards, etc.) as shown in figure 15. Application No was filed by Mitsubishi UFJ Financial Group for class 36 (banking, etc.) as shown in figure 16. Position Marks Application No was filed by Toyota Motor for class 12 (nonelectric prime movers for land vehicles, etc.) as shown in figure 17. The L shape and reverse L shape just under the headlights are the mark elements that constitute the position mark (other portions are disclaimed with broken lines). Application No was filed by Nikon for class 9 (cameras, digital cameras) as shown in figure 18. The U shape in red just under the shutter button is the mark element that constitutes the position mark (other portions are disclaimed with broken lines). Examples of Nontraditional Trademarks Granted under the Amended Law On October 27, 2015, the Japan Patent Office (JPO) published issued notices of allowance for nontraditional trademarks for the first time. Sound Marks Notices of allowance have been issued for 21 sound marks, including Application Nos ( Hisa-mi-tsu word with sound) and ( A-ji-no-mo-to word with sound) shown in figures 22 and 23. As of October 27, 2015, no notices of allowance have been issued for any sound marks without word elements. Color Marks As of October 27, 2015, no notices of allowance have been issued for any color marks. Motion Marks Notices of allowance have been issued for 16 motion marks, including Application No (Hisamitsu motion mark with Hisamitsu word) shown in figure 21. Hologram Marks Only one notice of allowance has been issued for a hologram mark, Application No , as shown in figure 15, on page 40. Position Marks Notices of allowance have been issued for five position marks, including Application Nos (Fujitsu red stripe for laptops) and (Edwin red tag with EDWIN word for trousers) shown in figures 22 and 23. 5

6 Summary As explained above, nontraditional trademarks, such as sound marks, color marks, motion marks, hologram marks, and position marks, are now registrable trademarks under the Japanese trademark law. Filing applications for such nontraditional trademarks to obtain registered trademark rights is a great way of protecting brands. On the other hand, it is not easy to obtain registrations for color marks and sound marks without word elements because they are not inherently distinctive. As such, it is important to use these marks continuously and intensively in order to provide examiners with sufficient proof of secondary meaning. In this sense, it is more and more important to adopt strategies, not only for obtaining registered trademark rights, but also for using trademarks appropriately. 6