1. Introduction

The Japanese Diet enacted the Bill for the Act for the Partial Revision of the Patent Act, etc. on April 25, 2014, which was then promulgated on May 14, 2014. The bill covers a revision of the Japanese Trademark Law. The revised Trademark Law expands the scope of protection so that non-traditional trademarks such as sound marks and color marks can be protected. The revised Trademark Law will be put into effect within one year from the promulgation date.

In this article, we provide information on non-traditional trademarks in Japan for each of the following four stages in trademark prosecution and enforcement: pre-application stage; application stage; examination stage; and post-registration stage.

2. New Types of Trademarks: What kinds of trademarks can you apply for?

The revised Trademark Law will allow you to apply for the types of marks shown in the table below.

Currently, there are no plans to provide means for protection of other types of marks such as olfactory marks, touch marks, and taste marks. However, according to the revised Trademark Law, all marks specified by Cabinet Order as being recognizable by human perception can be protected. Therefore, it would be possible to file applications for some of the marks shown in the table in the future, if the Cabinet Order were to be accordingly revised.

Click here to view the table.

3. Applications: How can you file applications for non-traditional trademarks?

Applications for non-traditional trademarks must contain the following sections or items:

(1) Trademark Specimen

In the case of sound marks, the specimen would be a score or graphical representation using musical notation. If a motion mark is applied for, the specimen would consist of multiple drawings illustrating the motion.

(2) Statement of the Trademark Type

It is necessary to state which type of trademark you are applying for.

(3) Detailed Description of the Trademark

If you apply for a sound mark, it is not necessary for the application to include a detailed description of the trademark. Instead, you must attach, to the application, materials specified by Cabinet Order, such as sound data.

In the case of a Madrid Protocol application, the Japanese Patent Office (JPO) regards the description of the trademark in the Madrid Protocol application as being equivalent to what is described in the Detailed Description of the Trademark, which is a required section in Japanese trademark applications.

The detailed description of the trademark can be amended at any time as long as the application is pending at the JPO. This applies even to Madrid Protocol applications.

 

4. Examination: How will your application for a non-traditional trademark be examined?

The main reasons for rejecting applications for non-traditional trademarks during examination are as follows:

(1) Distinctiveness

There is a strong likelihood that non-traditional trademarks will be rejected due to lack of distinctiveness.

An effective measure for overcoming such a rejection is to prove that the trademark applied for is famous in Japan and has acquired distinctiveness. The trademark applied for and the designated goods or services thereof have to be identical to the trademark used and the goods or services for which the trademark has been used.

It is also possible to avoid a rejection based on lack of distinctiveness by applying for a non-traditional mark combined with a word mark, for example.

(2) Similarity

For trademarks in general, if at least one of the appearance, pronunciation, or concept of a trademark is identical or similar to that of another mark, the two marks will be deemed to be similar to each other.

However, in the case of non-traditional trademarks, the judgment on similarity will put weight on features specific to the type of non-traditional trademark. For example, the appearance is the most important feature in the case of color marks, and the pronunciation or sound is the most important feature for sound marks. Therefore, even if the appearance and concept of a word mark are the same as those of a sound mark combined with the same word as the word mark, they can be considered to be dissimilar to each other, as long as the sound mark has a unique pronunciation or sound. For example, a sound mark that has a unique melody combined with the word “JPO” can be deemed to be dissimilar to the word mark “JPO”, but a sound mark having a non-unique melody combined with the word “JPO” may be considered to be similar to the word mark

“JPO”.

(3) Unregistrable trademarks

A trademark consisting only of features that are inherent in the goods, the packaging thereof, or the services and that are specified by Cabinet Order can be rejected, even if the trademark has acquired distinctiveness. For example, an application for a famous sound mark consisting only of the sound of a bowling ball hitting bowling pins can be rejected with regard to the service “Providing bowling alleys” in spite of the fame of the sound mark.

In addition, a trademark that is likely to contravene public order and morality cannot be registered regardless of its fame. For example, a sound mark consisting of the sound of a siren or the melody of a national anthem cannot be registered.

(4) Formalities

If a detailed description of the trademark is not provided or materials as described above are not attached to the application, the application will be rejected.

5. Enforcement: What can you do with registered non-traditional trademarks?

When determining the scope of a trademark right, the detailed description of the trademark and/or the materials attached to the application will also be considered.

For trademarks in general, if a third party uses a trademark identical or similar to a registered trademark in connection with goods or services identical or similar to the designated goods or services of the registered trademark, it will be deemed that the third party infringes the trademark right. The revised Trademark Law adds the following definition as the “use of a sound mark”:

  • Emitting the sound of a sound mark for providing goods or services
  • Recording the sound of a sound mark on a recording medium attached to the goods, articles used for providing services, or advertising relating to the goods or services

Therefore, if you discover an instance of any one of the above uses of one of your registered sound marks, you can argue infringement of the trademark right. For example, if a third party sells a product without attaching your mark to the product but the pronunciation is the same as that of your mark, it would be difficult to stop them from selling the product without a sound mark registration. However, if your mark is registered as a sound mark, you can prevent them from selling products having the same sound as your mark.

 

6. Conclusion

Since Japan adopts a first-to-file system, we recommend applying for non-traditional trademarks as soon as possible after the revised Trademark Law is put into effect.

If you wish to file applications for trademarks that are likely to be rejected due to lack of distinctiveness (e.g., color marks), it would be necessary to prepare materials in advance to prove the fame of the trademarks.

The above information may change before the revised Trademark Law is put into effect. A revision to the Examination Guidelines for Trademarks is expected. We will provide more details on non-traditional trademarks if the Examination Guidelines are revised.