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Current Situation of Non-Traditional Trademark Registration/Japan

1. First Office Action for Non-Traditional Trademark Applications

On April 1, 2015, non-traditional marks, such as sounds, holograms, colors (without delineated contours), positions and moving images, became registrable as trademarks in Japan, following the revision of the Trademark Act in 2014, and the Japan Patent Office (the "JPO") has started accepting applications for non-traditional trademarks. We believe that the introduction of non-traditional trademarks will further strengthen brand protection in Japan and provide brand owners with various choices of brand communication tools.

According to the JPO's news release, the JPO received 515 applications for non-traditional trademarks between April 1 and April 10, 2015. The breakdown of such applications is as follows in Table 1:

Table 1

Type of Marks No. of Applications
Color marks 203
Sound marks 166
Position marks 106
Motion marks 37
Hologram marks 3

On October 27, 2015, the JPO published its first examination results for non-traditional trademark applications. According to the JPO's news release, the total number of applications submitted up to October 23, 2015 and the number of decisions rendered are shown below in Table 2.

Table 2

  Sound Motion Hologram Color Position Total
Until October 23 (provisional) 321 70 11 423 214 1,039
Decisions of Registration 21 16 1 0 5 43

The total number of applications amounted to more than 1,000 in the first six months, and, in particular, color marks comprise nearly half of the applications. On this occasion, the Decisions of Registration have been rendered for 43 applications in total, while the JPO stated that they would continue examinations of other applications. No decision was rendered with respect to any of the color mark applications.

You can find all of the applications of non-traditional trademarks which received the Decisions of Registration on October 23, 2015 at the JPO website below (only in Japanese):

http://www.meti.go.jp/press/2015/10/20151027004/20151027004-1.pdf

2. Examples of Motion Mark and Sound Mark

We successfully obtained the Decisions of Registration for our client ST Corporation with respect to the following sound and motion marks:

(1) Motion Mark

Reg. No. 5804313
App. No. 2015-29932
(10 figures in total)

(2) Sound Mark

Registration No. 5804312
App. No. 2015-29931
Trademark: This trademark consists of the chirping of a chick "Pi-yo Pi-yo" with the voice saying "ST" and is one second long in total.

In fact, ST Corporation's trademark consists of a combination of the above sound and moving chick image. However, because the Trademark Act has not allowed applications for trademarks consisting of a combination of sounds and motions, we had to file and obtain the sound mark and the motion mark separately.

You can find all of the pending applications and registrations of non-traditional trademarks at the J-PlatPat, a platform for Japanese patent, design and trademark information:

https://www3.j-platpat.inpit.go.jp/cgi-bin/ET/TM_AREA_E.cgi?1461037894947

3. Color Marks

According to the J-PlatPat, as of April 17, 2016, 469 applications for registration of color marks are still under examination. No decision has been made with regard to color marks. The following are some examples of color mark applications:

(1) App. No. 2015-30038 (Seven-Eleven Japan)


Class 35 - Retail or wholesale services

(2) App. No. 2015-29921 (Christian Louboutin)


Class 25 - Women's high-heeled shoes

(3) App. No. 2015-029938 (Red Bull)


Class 32 - Energy-supplying drink without an alcohol content

According to the latest Trademark Examination Guidelines published by the JPO effective as from April 1, 2015 (https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/tt1302-002.htm), in principle, color marks are not registrable and may be registered only when the applicant successfully proves the distinctiveness acquired through use (Article 3(2) of the Trademark Act). Therefore, it seems that the JPO has spent time to carefully examine the submitted evidence of the acquired distinctiveness.

According to the said Trademark Examination Guidelines, the following facts will be taken into consideration to judge the level of consumers' awareness and the distinctiveness of a mark:

  1. A mark actually in use and goods or services for which it is used;
  2. The start of its use, the length of its use or the area where it is used;
  3. The volume of production, certification or delivery and a scale of business (number of stores, an area of business, an amount of sales, etc.);
  4. The method, frequency and contents of advertisements and promotion;
  5. The number of times of appearance in general newspapers, trade journals, magazines and the internet, and contents thereof; and
  6. The outcome of the questionnaire regarding consumers' awareness of the mark.

It is also provided that evidence to prove the above facts include:

  1. Advertisements (newspaper clippings, magazines, catalogues, leaflets, TV commercials, etc.);
  2. Invoices, delivery slips, order slips, bills, receipts, account books, pamphlets, etc.;
  3. Photographs or moving images showing the use of the mark;
  4. A certificate by an advertising agency, broadcasters, publishers or printing companies;
  5. A certificate by a trade association, fellow traders or consumers;
  6. A certificate by a public organization, etc. (the state, a local public entity, a foreign embassy in Japan, a Chamber of Commerce and Industry, etc.);
  7. Articles in general newspapers, trade journals, magazines and internet websites; and
  8. The outcome reports of a questionnaire intended for consumers regarding awareness of the mark (provided, however, that due consideration will be given to the objectivity of the questionnaire with respect to the conductor, method and respondents).

We expect that the level of required distinctiveness for color marks will be revealed by the JPO's first office action for color mark applications in the future and will be finally decided at the IP High Court.