From 1 April 2015, applicants can start to file applications in Japan for so-called “non-traditional” trademarks such as colour marks and sound marks. Our overview of the recently published examination guidelines for such non-traditional trademark applications has identified the following highlights.

How to identify a colour trademark in the application

A mark can be registered if it consists exclusively of a colour or colours (and fulfils the usual criteria for trademark registration). However, the examination guidelines stipulate that even if a trademark application indicates this kind of mark, the application will be rejected (under Article 3.1 of the Japanese Trademark Law) if it is not considered as such based on the specimen and the detailed description of the mark.

The guidelines set out various examples of cases where a mark would and would not be considered to consist only of a colour or colours, including the following:

1. A mark would not be acceptable where it is obvious that the trademark identifies particular letters, or certain devices, such as:

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2. In contrast, a mark would be acceptable if the application has a drawing or photo indicating the colour or colours, and also states in the detailed description that the mark consists only of a colour or colours.

(Example 1) Single colour

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(Example 2) Combination of colours

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3. Also, a mark would be considered to consist of only a colour or colours if the application has one or more different drawings or photos in which the coloured part only comprises the colour(s) in question, identifies the position of the colour(s) in the mark or on the product by the use of broken lines, and states in the detailed description that the mark consists only of a colour or colours.

(Example 1) Where the position of the colour(s) on the product, etc. is identified

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How to identify a sound mark in the application

A mark can be registered if it is a sound mark (and fulfils the usual criteria for trademark registration). However, the examination guidelines stipulate that even if a trademark application claims this kind of mark, the trademark application will be rejected (under Article 3.1 of the Japanese Trademark Law) if it is not considered as such based on the application, the materials provided and the detailed description of the mark.

The guidelines set out various examples of cases where a mark would and would not be considered as a sound mark, including the following:

1. A mark would not be considered as a sound mark where the mark shown in the application (a) contains an element or elements that do not constitute a sound mark, such as a music title or a composer’s name, etc., or (b) is represented by any forms other than letters or musical notation.

(Example 1) Where the mark is represented by sound spectrogram (sonogram)

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 (Example 2) Where the mark is represented by tablature or letter notation

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2. In contrast, a mark would be considered as a sound mark if it is represented by a musical notation containing all of the following elements:

  • musical notes;
  • clef symbols (treble clef, etc.);
  • tempo (metronomic indications or speed symbols, etc.);
  • time signature (4/4, etc.); and
  • linguistic elements (where lyrics, etc., are included).

Examination of non-traditional trademarks for distinctiveness

If a mark filed as a “motion mark”, “hologram mark” or “position mark” is not distinctive enough (to distinguish the product/service from those of other manufacturers/providers), it will be rejected on the grounds of lack of distinctiveness.

Even though colour marks are now registerable in principle, they must meet the usual criteria for trademark registration. As a general rule, a trademark consisting only of a colour or colours will be rejected due to lack of distinctiveness. Colour marks will need to attain distinctiveness (or secondary meaning) to be registerable.

The same applies to sound marks. As a general rule, a sound mark consisting of a sound that a product normally generates, a single sound, any sound recognized as a natural sound, or any sound considered as music will be rejected due to lack of distinctiveness.

Rights of continued use

Non-traditional trademarks that have been in use before 1 April 2015 can continue to be used without being registered with the exception of position marks (i.e., marks that are specified by the position in which they appear or are fixed on a particular product). Trademarks that have been used before 1 April 2015 in a certain position on products cannot be entitled to be used continuously as position marks.  Since a position mark can only be an additional indication of the position in which a mark is placed, rights for continued use as a position mark cannot be afforded to this indication separately.

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This long-awaited widening of protection should be taken into account when planning or reviewing trademark portfolios and we will be monitoring and advising on related trends and developments over the coming months