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HARAKENZO
WORLD PATENT & TRADEMARK


OSAKA
HEAD OFFICE

DAIWA MINAMIMORIMACHI BLDG.,
2-6, 2-CHOME-KITA, TENJINBASHI,
KITA-KU,OSAKA 530-0041 JAPAN
TEL:+81-6-6351-4384
(Main Number)
FAX:+81-6-6351-5664
(Main Number)
E-Mail:

TOKYO
HEAD OFFICE

WORLD TRADE CENTER BLDG. 21 F,
2-4-1, HAMAMATSU- CHO, MINATO-KU,
TOKYO 105-6121,JAPAN
TEL:+81-3-3433-5810
(Main Number)
FAX:+81-3-3433-5281
(Main Number)
E-Mail:


HIROSHIMA
OFFICE

NOMURA REAL ESTATE HIROSHIMA BLDG. 4 F, 2-23 TATEMACHI, NAKA-KU, HIROSHIMA CITY, HIROSHIMA 730-0032, JAPAN
TEL:+81-82-545-3680
(Main Number)
FAX:+81-82-243-4130
(Main Number)
E-Mail:


In the background of the HARAKENZO trademark is a global map wherein countries/regions are sized according to the number of patents registered there in 1991.

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New-Type Trademark
Osaka Legal Department Trademark Division
Manager

Tokyo Legal Department Trademark Division
Manager


: Kazunori TAKEDA

: Yuki YAMAZAKI

 
[ TOKYO HEAD OFFICE ]
 
[ OSAKA HEAD OFFICE ]
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1. Color mark without delineated contours

(1) Outline of system to be introduced in Japan

The revision to the Trademark Law will come into force on April 1, 2015. Under the revised Trademark Law, a "color mark without delineated contours" (trademark consisting solely of color) will be eligible for registration.

  • Determining distinctiveness
    As with a conventional trademark, whether or not a color mark without delineated contours is distinctive is determined. Specifically, whether or not the color mark without delineated contours is distinctive is comprehensively determined, taking into account a trademark sample and detailed description of trademark (describing color codes etc. so as to specify a color(s)).
    Basically, it is not perceived that a trademark consisting of a single color and a trademark consisting of a combination of a plurality of colors are distinctive. However, such trademarks can be registered only if the trademarks obtain remarkability by being used.
  • Determining similarity
    Whether or not a color mark without delineated contours is similar to another color mark without delineated contours is determined, comprehensively taking into account color tone, color saturation, brightness, etc. of (i) a color of appearance of the color mark and (ii) a color of appearance of the another color mark.
    (e.g., as to determining similarity of a trademark consisting of a single color, it is determined that red is similar to crimson, whereas it is determined that crimson is not similar to pink)
  • Monopoly adaptability
    A trademark of, e.g., a single color “black” of commercial goods “automobile tire” will not be registered under Article 4(1)(xviii) of the Trademark Law.




(2) Example registrations in other countries
EUTM (community trademark) Australia United States
Trademark No. 8298499 Class 4 etc. Trademark No. 8683633 Class 9 etc. Trademark No. 780092 Class 6 etc. Trademark No. 3361597 Class 25 “fashion shoes designed for women”
Determining distinctiveness
• A trademark consisting solely of a single color for all goods and services inherently lacks distinctiveness (except for extremely special cases)
• In a case of a trademark consisting of a combination of colors, whether or not the trademark is distinctive is determined for individual case. However, in a case where colors of a trademark are used solely for decoration of appearance of goods, it is determined that the trademark is not distinctive.
• A trademark consisting solely of a single color to be used as a color of appearance of goods inherently lacks distinctiveness. Note, however, that evidence that a trademark obtains remarkability by being used can be submitted.
• A trademark consisting of a combination of colors is sometimes distinctive to some degree.
• A trademark consisting solely of a single color and a trademark consisting of a combination of colors inherently lack distinctiveness.
Determining similarity
Whether a color mark without delineated contours is similar to another trademark is determined in different manners in different countries, but there are no special examination guidelines for such determination in any country.
If an Opposition is filed, whether a color mark without delineated contours is similar to another trademark is determined on the basis of whether the color mark without delineated contours may cause confusion. Whether color mark without delineated contours is similar to another trademark is determined for each individual case on the basis of what general impression the color mark without delineated contours gives to consumers. Whether a color mark without delineated contours is similar to another trademark is determined on the basis of whether the color mark without delineated contours may cause confusion.




(3) Strategy for filing an application

Since a trademark consisting of a single color and a trademark consisting of a combination of colors are in principle determined that they are not distinctive, it is necessary to prepare an evidential material demonstrating remarkability (record of use of the trademark). A trademark with record of use of the trademark should be identical to a trademark of a filed application. However, it is hard to think that only a material demonstrating that a color of the trademark with record of use of the trademark is completely identical to that of the trademark of the filed application is taken into consideration during examination and/or appeal.

Therefore, by filing a plurality of applications each of which trademark sample and detailed description of trademark describe a pattern of similar colors, it will be possible to precisely protect trademark rights in further accordance with record of use.









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2. Position mark

(1) Outline of system to be introduced in Japan

A position mark will be defined as “a mark consisting of any character(s), figure(s), sign(s), or three-dimensional shape(s), or any combination thereof, or any combination thereof with color(s)”, and will be specified by a position in a product or an article to be used for the provision of services to which position a mark is attached.

  • Determining distinctiveness
    It will be necessary to indicate a type of a mark (that is, to indicate that the mark is a position mark) in an application. Furthermore, it will be necessary to provide a sample of the mark and detailed description of the mark in the application. As the detailed description of the mark, specific explanations of a name, a shape, a feature, etc. of a position in the whole product (a part of the product) are expected to be required.
    As a method of specifying the position in the sample of the mark, assumed are (i) a method in which the position is indicated with a picture and (ii) a method in which the position and the product are depicted by a solid line and a dotted line, respectively, as in partial designs. In a case where a solid line part has distinctiveness by itself, distinctiveness of the position mark will tend to be admitted regardless of the position of the solid line part. On the other hand, in a case where the solid line part does not have distinctiveness by itself, distinctiveness of the position mark will not be admitted in principle. Only in a case where the position mark becomes distinctive as a result of use, the position mark will be registrable.
  • Determining similarity
    Similar to traditional trademarks, a position mark will be examined for similarity upon comprehensively considering an appearance, pronunciation, concept of a contrasted trademark and considering an element of a position of the position mark. That is, even in a case where a position mark itself specified by a solid line has strong distinctiveness or the position mark is not identical or similar in position to a contrasted trademark, the position mark may be considered similar to the contrasted trademark in many cases.




(2) Example registrations in other countries
EUTM(community trademark) United States
Trademark No.: 3889615
Class 25 “Footwear”
Detailed Description of Mark: The trademark consists of a circular band in the shape of a ring on a shoe; it is on the side of the shoe, between the shoe laces and the sole.
Registration No.: 2851315
Class 25 “Footwear”
Detailed Description of Mark: Color is not claimed as a feature of the mark. The mark consists of a red stripe placed longitudinally along the middle of the heel of an item of footwear, partly covering the rear of the sole and partly the rear of the item of footwear. Any molding seen on the sole or on the rear part of the item of footwear and/or production characteristic are not part of the mark. The mark is lined for the color red.
Registration No.: 2363544
Class 9 “Cursor control device sold as a component part of a computer keyboard”
Detailed Description of Mark: The mark consists of the color red used on the cursor control device component of the goods. The matter shown in the drawing in broken lines serves only to show positioning of the mark and no claim is made to it. The mark is lined for the color red.
Determining distinctiveness
EUTM: In principle, whether a position mark is distinctive is determined on the basis of how that position mark is used normally.
U.S.: No special provisions
Determining similarity
Whether a position mark is similar to another trademark is determined in different manners in different countries, but there are no special examination guidelines for such determination in any country.
If an Opposition is filed, whether a position mark is similar to another trademark is determined on the basis of whether the position mark may cause confusion. Whether a position mark is similar to another trademark is determined for each individual case on the basis of what general impression the position mark gives to consumers. Whether a position mark is similar to another trademark is determined on the basis of whether the position mark may cause confusion.




(3) Strategy for filing an application

Position marks are interrelated to the partial design system, and each position mark is required to have distinctiveness as a trademark. However, there is a possibility left that a design which already lacks novelty will be protected as a trademark.

According to position marks, similar to partial designs, it is considered possible to ensure strong protection not as a point but as a surface by filing trademark applications for different positions. However, differently from designs, in a case of trademarks, it will be necessary to make determination in consideration of a risk of rescission of a trademark due to disuse.









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3. Sound mark

(1) Outline of system to be introduced in Japan

The revision to the Trademark Law will come into force on April 1, 2015. Under the revised Trademark Law, new types of trademarks such as a "sound mark" will be eligible for registration.

  • Determining distinctiveness
    Whether a sound mark is distinctive will be determined by collectively considering a sound element (music, a natural sound, or the like) and a linguistic element (lyrics or the like) which constitute the sound mark.
    Accordingly, if a linguistic element constituting a sound mark does not fall under any of the cases provided under Trademark Law Article 3(1), it is considered that the entire sound mark does not fall under Trademark Law Article 3(1). Similarly, if a sound element constituting a sound mark does not fall under any of the cases provided under Trademark Law Article 3(1), it is considered that the entire sound mark does not fall under Trademark Law Article 3(1).

    (Example) The following sound marks or sounds each lacks distinctiveness in principle.
    • (i) a sound mark obtained by merely reading out a common name/customarily used mark of goods or services
    • (ii) a trademark consisting solely of a mark displaying, by a commonly used method, a sound normally produced by goods or a sound normally produced in providing services. ((Example) 'syuwa syuwa', a sound of bursting bubbles, for goods "carbonated drinks")
    • (iii) a single sound or a very short sound equivalent to the single sound
    • (iv) a sound which is recognized as a natural sound
    • (v) a sound which a consumer recognizes as only a musical piece such as classical music, a popular song, or original music
    • (vi) a sound which is neither indispensable for goods to function, nor indispensable to provide services, but is normally used for goods or services in the market of the goods or services
    Reference:
    ? Shiryo 1 "Shohyo Shinsa Kijun Tatakidai An Heisei 26 Nen 11 Gatsu 26 Nichi" [Material 1: "Draft Proposal for Guidelines for Examination Guidelines of Trademarks, November 26, 2014"]
  • Determining similarity
    Whether a sound mark is similar to another trademark will be determined by collectively considering a sound element (a musical element such as melody, harmony, rhythm, or tempo; a tone which varies depending on, for example, a musical instrument played or a voice range; other natural sound; or the like) and a linguistic element (lyrics or the like) which constitute the sound mark.
    However, as in the conventional examination practice, whether a trademark is similar to another trademark may be determined by considering distinctiveness of a sound element and a linguistic element which constitute a sound mark and indivisibility of these elements, separately observing the elements, and extracting one of the elements as a substantial part.
    Further, in a case where a linguistic element is extracted as a substantial part, it is also determined whether the linguistic element is similar to a character mark.

    (Example) * The above sound marks are identical in musical element.

    (Example)
    Reference:
    Shiryo 1 "Shohyo Shinsa Kijun Tatakidai An Heisei 26 Nen 11 Gatsu 26 Nichi" [Material 1: "Draft Proposal for Guidelines for Examination Guidelines of Trademarks, November 26, 2014"]
  • Monopoly adaptability
    Under the provision of Article 4(1)(xviii) of Trademark Law, no trademark shall be registered if the trademark consists solely of (i) a sound naturally generated from goods etc. or (ii) a sound which is indispensable for goods etc. to properly function.
    However, in making a determination of the above (ii), it is considered whether or not there is an alternative sound which allows the goods etc. to properly function. In a case where there is such an alternative sound, it is considered whether the alternative sound can be produced at cost substantially the same as (or equal to or lower than) the cost at which the sound which is indispensable for the goods etc. to properly function is produced.
(2) Example registrations in other countries
EUTM (community trademark) Australia United States
The mark consists of the sound of a human voice yodeling "YAHOO".
Registration No.: 2289049
Designated Goods: Class 9, Class 28
Registration No.: 1230828
Designated Goods: Class 9
Descriptions: The mark is a sound mark. The mark consists of a series of tones or musical notes without words, as set forth in the musical score and sound recording accompanying the application.
Registration No.: 2442140
Designated Services: Class 42
Determining distinctiveness
In principle, whether a sound mark is distinctive is determined on the basis of how that sound mark is used normally (how it is used by the average person representative of consumers related to the goods or services). Whether a sound mark is distinctive is determined similarly to normal trademarks. Note that some new-type trademarks inherently lack distinctiveness.
Whether a sound mark is distinctive is determined in view of whether another person in the same trade wishes to use a trademark which is identical or similar to a filed trademark.
Whether a sound mark is distinctive is determined similarly to normal trademarks.
Determining similarity
Whether a sound mark is similar to another trademark is determined in different manners in different countries, but there are no special examination guidelines for such determination in any country.
If an Opposition is filed, whether a sound mark is similar to another trademark is determined. Whether a sound mark is similar to another trademark is determined similarly to normal trademarks.
Whether a sound mark is similar to another trademark is determined on the basis of an overall impression formed by a customer who handles goods or services.
Whether a sound mark is similar to another trademark is determined on the basis of whether the sound mark may cause confusion.




(3) Strategy for filing an application

In a case where a sound mark is registered, the registered sound mark is basically entirely protected. Accordingly, in a case where the sound mark includes a part whose right is particularly required to be protected, it is considered that stronger right protection for the sound mark can be achieved by filing a separate application for the part.

For a sound mark which includes a linguistic element and in which the linguistic element is closely integrated with a sound element, it is desirable to file the linguistic element as a character mark and file only the sound element as a separate sound mark. This is considered to be effective particularly in a case where the linguistic element and the sound element are both distinctive. Note, however, that it would be necessary to make a determination of filing of an application in consideration of a risk of cancellation of a registered trademark not in use.









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4. Motion mark

(1) Outline of system to be introduced in Japan

Motion marks will be established under the category "a trademark having changeable character(s), figure(s), sign(s), three-dimensional shape(s), or color(s), the trademark covering a change of such a character(s), figure(s), sign(s), three-dimensional shape(s), color(s), or combination thereof" (provided for in Article 5(2)(i) of the revised Trademark Law).

  • Determining distinctiveness
    Whether a motion mark is distinctive is determined by (i) specifying, from "the trademark for which registration is sought" and "detailed description of trademark", a mark such as a character(s) or figure(s) and a state in which such a mark changes with time (a way of motion of a mark*1) and (ii) collectively determining the distinctiveness.
    In general, since a “motion” (i) is expected to call attention and produce a decorative effect in advertisement and the like and (ii) tends to be adopted to perform a function of a specific three-dimensional shape, whether or not a mark itself is distinctive tends to have influence on the determination on distinctiveness of a trademark on the whole.
    It should be noted that the motion mark consists of a character(s), figure(s), etc. in a period of time of before and after the change. Therefore, “motions in themselves” of the character(s), figure(s), etc. will not be regarded as constituent elements of trademarks.

    *1 The “way of motion” also refers to a “trajectory” which is expressed (or left) as a result of the motion. Therefore, in a case where a mark is expressed as a trajectory, the mark will be regarded as a character(s), figure(s), etc. when determined on whether or not it is distinctive.
    Anything whose trajectory is not left as a result of motion but whose afterimage is clearly left by taking advantage of the "persistence of vision" effect will not be regarded as a constituent element of a trademark under the revised Trademark Law.


    (Example) Trajectory expressed as a result of motions, and moved figure


    Trajectory of automobile (moved figure) shows characters “SUN”.
    Reference:
    Shiryo 3 "Ugoki Shohyo ni kansuru Shinsa Kijun ni tsuite (An) Heisei 26 Nen 8 Gatsu"
    [Material 2: "About Guidelines for Examination of Motion Marks (Draft), August 2014"]
  • Determining similarity
    A motion mark will be examined for similarity as a trademark on the basis of an appearance, a name, and a notion that are generated from the whole of a trademark resulting from a combination of a mark (character(s), figure(s), etc.) and the way of motion (trajectory) which combination makes up a motion mark.
    In the current examination, determination of similarity is performed on different types of trademarks, that is to say, a three-dimensional trademark and a plane trademark (for example, character trademark). Therefore, motion marks will probably be determined for similarity in a cross-cutting manner, as long as the determination of similarity is possible in terms of their natures.




(2) Example Registrations in other countries
EUTM (Community trademark) Australia United States
Trademark No. 001864610
Class 35, etc.
Trademark No. 810792
Class 29, etc.
Trademark No. 2373655
Class 9
Determining distinctiveness
In principle, whether a motion mark is distinctive is determined on the basis of how that hologram mark is used normally (how it is used by the average person representative of consumers related to the goods or services). Whether a motion mark is distinctive is determined similarly to normal trademarks. Note that some new-type trademarks inherently lack distinctiveness. No special provisions
Determining similarity
Whether a motion mark is similar to another trademark is determined in different manners in different countries, but there are no special examination guidelines for such determination in any country.
If an Opposition is filed, whether a motion mark is similar to another trademark is determined on the basis of whether the motion mark may cause confusion. Whether a motion mark is similar to another trademark is determined for each individual case on the basis of what general impression the motion mark gives to consumers. Whether a motion mark is similar to another trademark is determined on the basis of whether the motion mark may cause confusion.




(3) Strategy for filing an application

Motion trademarks can be divided into “a trademark in which a form of a mark itself changes” and “a trademark in which a mark itself does not change but a position of the mark changes”.

  • [1] Trademark in which a form of a mark itself changes
    This type of trademark mainly has a distinctive change of form. Therefore, an Applicant is recommended to file a trademark application of a mark changeable in form, under the category of a motion trademark. Then, the Applicant is also recommended to file normal trademark applications of a mark having an initial form and a mark having a final form both of which are easily viewed in static states.
  • [2] Trademark in which a mark itself does not change but a position of the mark changes
    If a mark itself has distinctiveness, an Applicant is recommended to file a normal trademark application. Then, the Applicant is also recommended to file a trademark application of a mark which leaves a trajectory when it changes its position, under the category of a motion trademark.
    For a mark having no distinctiveness in itself, a trademark application will be filed under the category of a motion trademark. However, since a motion itself is regarded as having no distinctiveness, it is necessary for the Applicant to give distinctiveness to the mark by leaving a trajectory or by use.








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5. Hologram mark

(1) Outline of system to be introduced in Japan

Hologram marks will be established under the category "a trademark having a changeable character(s), figure(s), sign(s), three-dimensional shape(s), or color(s), the trademark covering a change of such a character(s), figure(s), sign(s), three-dimensional shape(s), color(s), or combination thereof" (provided for in Article 5(2)(i) of the revised Trademark Law).

  • Determining distinctiveness
    Whether a hologram is distinctive is determined by (i) specifying, from "the trademark for which registration is sought" and "detailed description of trademark", a mark such as a character(s) or figure(s) and a state in which such a mark changes and (ii) collectively determining the distinctiveness.
    A hologram may be used to provide multiple display surfaces on a plane. In such a case, whether the hologram is distinctive may be collectively determined by examining an element on each display surface.
    This means that a hologram mark consisting only of an indistinctive character(s) or figure(s) etc. will tend to be regarded as being indistinctive as a trademark on the whole, whereas a hologram mark having a distinctive character(s) or figure(s) etc. will tend to be regarded as being distinctive as a trademark on the whole.
  • Determining similarity
    Hologram marks will be examined for similarity as a trademark on the basis of (i) the appearance produced with the overall arrangement of a character(s), figure(s), etc. displayed on a display surface(s) of the hologram, (ii) the pronunciation of the hologram and (iii) the concept of the hologram.
    For example, in many cases, similarity of a trademark in which a hologram is used so as to display multiple display surfaces on a plane will be determined as below (this is an issue peculiar to hologram marks):
    (i) If the respective elements on multiple display surfaces of a hologram mark are combined inseparably with each other, there will be no particular reason for separately examining the elements (i.e., an integrated trademark). Thus, such a hologram mark is not similar to a word mark consisting of only a part of the combined elements.
    (Example)

    Reference:
    Shiryo 3 "Horoguramu Shohyo ni kansuru Shinsa Kijun ni tsuite (An) Heisei 26 Nen 8 Gatsu" [Material 3: "About Guidelines for Examination of Hologram Marks (Draft), August, 2014"]

    (ii) If the respective elements on multiple display surfaces of a hologram mark are not combined inseparably with each other, and the hologram mark is not in the state in which, for example, each element accounts for a small proportion of the entire hologram mark, it is appropriate to also examine the elements separately. Thus, such a hologram mark is similar to a word mark consisting of a word(s) on a display surface of the hologram mark.
    (Example)

    Reference:
    Shiryo 3 "Horoguramu Shohyo ni kansuru Shinsa Kijun ni tsuite (An) Heisei 26 Nen 8 Gatsu" [Material 3: "About Guidelines for Examination of Hologram Marks (Draft), August, 2014"]

    (iii) If, for example, a word(s) or figure(s) that is displayed on a display surface of a hologram mark and that is to be examined separately accounts for only a small proportion of the entire hologram mark, the hologram mark is, in many cases, not similar to another mark in its entirety even if the other mark is similar to a single figure, etc. on a display surface of the hologram mark.
    (Example)

    Reference:
    Shiryo 3 "Horoguramu Shohyo ni kansuru Shinsa Kijun ni tsuite (An) Heisei 26 Nen 8 Gatsu" [Material 3: "About Guidelines for Examination of Hologram Marks (Draft), August, 2014"]




(2) Example registrations in other countries
EUTM (community trademark) Australia United States
Trademark No. 002117034
Class 9 etc.
Trademark No. 1155005
Class 28 etc.
Trademark No. 78470087
Class 36
Determining distinctiveness
In principle, whether a hologram mark is distinctive is determined on the basis of how that hologram mark is used normally (how it is used by the average person representative of consumers related to the goods or services). Whether a hologram mark is distinctive is determined similarly to normal trademarks. Note that some new-type trademarks inherently lack distinctiveness. No special provisions
Determining similarity
Whether a hologram mark is similar to another trademark is determined in different manners in different countries, but there are no special examination guidelines for such determination in any country.
If an Opposition is filed, whether a hologram mark is similar to another trademark is determined on the basis of whether the hologram mark may cause confusion. Whether a hologram mark is similar to another trademark is determined for each individual case on the basis of what general impression the hologram mark gives to consumers. Whether a hologram mark is similar to another trademark is determined on the basis of whether the hologram mark may cause confusion.




(3) Strategy for filing an application

First, if a hologram mark has multiple display surfaces and those display surfaces each display a word(s) or figure(s), the individual word(s) and figure(s) on the display surfaces are not protected independently even if such a hologram mark has been registered.

In particular, if multiple display surfaces (for example, six surfaces) each display a word(s)/figure(s), the word(s) or figure(s) on one of the display surfaces accounts for only a small proportion of the entire hologram mark, and thus there will be a lower possibility that such a word(s) or figure(s) is protected independently. Therefore, in such a case, it is desirable not only to seek a registration as a hologram mark, but also to seek registrations as conventional trademarks for the word(s)/figure(s) displayed on each of the display surfaces.





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