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-A New Frontier of Trademark Practice in Japan-
Hiromichi Aoki
Patent Attorney
Yuasa and Hara
Tokyo, Japan
APAA
Okinawa, Japan
November 15, 2015
Contents
History
Definition of Trademarks
Statistics
Why register it ?
Who registers it ?
Where is it used ?
Contents
How to prepare Applications
Requirement for registration
Applications and Registrations
Overlap of Trademark and Design
Trademark Infringement and Unfair Competition Prevention Law Cases
History
1. Trademark Law
- 3D Mark : April 1, 1977
- Color, Moving, Hologram, Position, Sound : April 1, 2015
2. Unfair Competition Prevention Law(UCPL)
- long period of time
Definition of Trademarks
Article 2.1 of Trademark Law“Trademark” in this Law means any marks among
those which are perceptible by human beings: characters, figures, signs, three-dimensional shapes, colors, or any combination thereof, sounds or other marks as prescribed by Cabinet Order.
- No Graphical Representation unlike in EU
- No Distinguishability unlike in EU or USA
- Smell, Touch, Taste, Moving Sound Marks are not protectable.
Moving Sound Mark in TaiwanReg. No. :1648265 Goods: Class 5Owner : Unicharm Corporation (Japanese Corporation)
Statistics in Japan(as of Oct. 23, 2015)
Type of Mark No. of ApplicationsFrom April 1, 2015(decision of registration)
1 Color 423(0)
2 Moving 70(16)
3 Hologram 11(1)
4 Position 214(5)
5 Sounds 321(21)
Total 1039(43)
Type of Mark No. of RegistrationsFrom April 1, 1997
1 3D 2034
Who registers it ?
B2C (Business to Consumer)
B2B (Business to Business)
B2G (Business to Government)
Global Company
Why register it ?
Distinguishability
Worldwide recognition (not word)
Investment(e.g. sound)
Commercial Magnetism
Good Origin Identifiers
Good Tool for Branding (Bonding)
Good Tool for Marketing
Where is it used ?
Touch Points-Store design
-Advertising Display
-Shelf
-Uniform
-Lounge
-Event
-Direct Mail
-Services
-After Care
How to prepare applications
3D- Type of Mark; Drawing
Color, Moving, Hologram, Position
- Type of Mark; Drawing; Explanation of Mark
Sounds- Type of Mark; Staff notation, onomatopoetic word or imitative word; MP3 Sound clip
(Unlike in EU, sonogram and oscillogram are not acceptable)
Requirement for registration
Unfair Competition Prevention Law(3 years)
Design Law(20 Years from registration date)
Copyright Law(50 years from death of author)
Trademark Law (no Limitation)
Requirements for registration
Reason for Opposition and Invalidation trial
Description Requirements
Distinguishability(characteristics of goods)
Secondary Meaning
Inherent characteristics of goods(Functionality)
Similarity of Prior Marks
Public Order and Morality
Description Requirement(Article 5.5 of Trademark Law)
If the explanation of mark or MP3 file does not identify the mark, application or registration will be rejected or invalidated.
There is no Time Limitation.
Inherent Characteristic of Goods(Functionality/Article 4.1.18 of
Trademark Law)
E.g. Black color for tire
Including
(1) Aesthetic Functionality in USA (Article 2.(e)(5) of Lanham Act)?
(2) Substantial Value in EU(Article 7(e)(3) of Community Trademark Law) ?
Similarity of MarksTokyo High Court(Octopus Case, Jan. 31, 2001)
Is Junior TM similar to Senior TM ?Junior TM (3D mark) Senior TM (2D mark)
Foods (takoyaki) Foods (takoyaki)
3D trademark and 2D trademarkTokyo High Court(Octopus Case, Jan. 31, 2001)
Takoyaki = Octopus dumpling
3D trademark and 2D trademarkTokyo High Court(Octopus Case, Jan. 31, 2001)
Yes – Tokyo High Court, Jan. 31, 2001
If a certain view of a 3D trademark is similar to a 2D trademark, the two trademarks are similar.
Both trademarks are personalized octopus wearing brow band. Leg shapes and positions are almost the same.
Thus, Junior trademark is similar to Senior trademark.
Is 3D Mark inherently
distinctive for “flashlight” ?
No – IP High Court, June 27, 2007
However, this mark was finally registered on ground of having secondary meaning. The lettering of the word mark “MINI MAGLITE” is narrow and small overall, and thus scarcely attracts attention. Configuration of goods per se obtained secondary meaning.
3D Trademarks – Maglite Case
Is 3D mark inherently
distinctive for a beverage ?
No– IP High Court, 3rd Division May 29, 2008
However, this mark was finally registered by proving secondary meaning. Unlike in the Maglite case, the famous mark “Coca-Cola” widely appeared on the bottle. Consumer survey results (60% to 80% recognition)supported proof of secondary meaning.
3D Trademarks – Coca-Cola Case
Is 3D mark inherently
distinctive for a beverage ?
No– IP High Court, Nov. 16, 2010
3D Trademarks – Yakult
However, this mark was finally registered by proving secondary meaning. Unlike in the Maglite case, the famous mark “YAKULT” widely appeared on the bottle and similar bottles existed(see below). Consumer survey results (98% recognition) supported proof of secondary meaning. Center is Yakult.
3D Trademarks –Yakult
Is 3D mark inherently
distinctive for beauty products (cosmetics),
soaps, perfumery, cosmetics?
No– IP High Court, April 21, 2011
However, this mark was finally registered by proving secondary meaning. No consumer survey was conducted. However, unique shape and over 15 years’ sales support this case.
3D Trademarks– Jean Paul Gaultier
Is 3D mark inherently
distinctive for an armchair ?
No– IP High Court, 3rd Division June 29, 2011
However, this mark was finally registered by proving secondary meaning. No consumer survey was conducted. However, eliminating counterfeit goods, unique shape, high sales amount, high advertising fee supports this case.
3D Trademarks– Y chair(Y stolen)
Is 3D mark inherently distinctive
for chocolate ?
Yes- IP High Court, 4th Division, June 30, 2008
It is both distinctive and novel, and may act as an indicator to general consumers upon deciding what chocolate to buy on a future occasion (memorable).
3D Trademarks – GuyLian Case
Inherent Distinctiveness
Maglite, Coca-Cola and Y chair are severe (3rd Div. IP High Court). On the other hand, GuyLian case (4th Div. IP High Court) is lenient.
3rd Div. IP High Court considered the balance with limited duration of patent and design rights. However, 4th Div. IP High Court did not consider it. This is the reason for the different standards.
3D Trademarks - Analysis
Appl. No. 2015-030294Class 38 (Telecommunication services)NTT Docomo
Explanation of Marks:Red Color, RGB (R:204,
G:0,B51) RGB=Red, Green, Blue
Appl. No. 2015-030540Class 39 (delivery of confidential correspondence)Japan Post Holdings Co., Ltd.
Explanation of Marks:Red Color, RGB (R:204, G:0, B:0)
Appl. No. 2015-30689Class 35 (auction)Yahoo! Inc.
Explanation of Marks:Red Color, RGB (R:255, G:0, B51)
Appl. No. 2015-029938Class 32 (energy drink )Red Bull AG
Explanation of Marks:Combination colors of Blue (Ral: 5002),
Silver (Ral: 9006). The distribution and ratio of the colors to each
other is 50%-50%.
Appl. No. 2015-30696Class 12 (Motor Bicycle)Kawasaki
Explanation of Marks: Lam Green, RGB(R:105, G190, B40). This color is used for tank of motor bicycle.
Appl. No. 2015-29921Class 25 (high-heeled shoes for women)Christian Lubtan
Explanation of Marks:The mark consists of a red (Pantone 18-1663TP) outsole on High-heeled shoes. The dotted lines are not part of the mark but are intended only to show placement of the mark.
Appl. No. 2015-33058Class 25 (Shoes for women)K.K. moda clea (Japanese corporation)
Explanation of Marks : Red Color, RGB ( R:166, G25, B46). The dotted lines are not part of the mark but are intended only to show placement of the mark.
Similar in France
「Pantone212(pink)」 and 「Pantone219(pink)」 are similar(Jan. 30, 2001, France)
(Plaintiff:Pantone 212) (Defendant:Pantone 219)
38
Appl. No. 2015-37883Class 39 (organizing trips)Japan Travel Bureau (JTB)
Explanation of Marks:Combination of Red, Gray and White. RGB (R:2014,
G:0, B:0) for Red, RGB (R:153, G:153, B:153) for gray, RGB (R:255, G:255,
B:255) for white. White-53.5%, Red-8%, Gray-38.5%.
(Ticket holder)
Appl. No. 2015-030237
Class 9 (Computer server)
Fujitsu
Explanation of Marks:Position Marks, The dotted lines
are not part of the mark but are intended only to show
placement of the mark.
Appl. No. 2015-030388(Position Mark)Class 28 (slot machine)Kita Denshi
Explanation of Mark:Position Mark. The dotted lines are
not part of the mark but are intended only to show
placement of the mark.
HappySign !
Appl. No. 2015-030377 (Sound Mark)Class 28 (slot machine)Kita Denshi
Sound Mark:
Metallic sound like
“GA KON”
for 1 second
HappySound !
Appl. No. 2015-30094Class 25 (shoes, sport shoes)Hummel Holdings AS
Explanation of Mark: Position Mark. The dotted lines are
not part of the mark but are intended only to show
placement of the mark.
Appl. No. 2015-30362Class 25 (shirts)Edwin (Japanese Corporation)
Explanation of Marks:Position Marks, Red tab with word “EDWIN”. The dotted lines are not part of the mark but are intended only to show placement of the mark.
Appl. No. 2015-76916Class 36 (Credit Card Services)K.K. JCB
Explanation of Mark::Hologram Marks, etc.
Appl. No. 2015-30198
Class 36 (Gift Card Services)Sumitomo Mitsui Card Co., Ltd.
Explanation of Mark:Hologram Marks, etc.
Overlap of Trademarks and Designs
Priority is decided on the basis of application date of trademark and design.
Later right holder cannot use its trademark or design(Article 29 of Trademark Law and Article 26 of Design Law).
Design Reg. No. 946209-1 /Reg. date:1999.12.17Articles: Speaker PhoneCreator: Scott H WakefieldOwner : Polycom Inc.
TM Reg. No. : 5394431 /Reg. date: 2011.2.25Goods: Speaker phoneDistinctiveness: inherently distinctiveOwner : Polycom Inc.
Design Reg. No. 1191186 :/Reg. date: 2003.10.10Articles: Plastic EraserCreator: Hideo KanbaraOwner: Kokuyo
TM Reg. No. : 5444010 /Reg. date: 2011.10.14
Goods: Plastic eraserDistinctiveness: Secondary MeaningOwner: Kokuyo
Design Reg. No. :1365260/Reg. date: 2009.6.19Articles: Container for perfumeCreator: Serge Mansau (sculptor)Owner: Kenzo
TM Reg. No. :5449039/Reg. date: 2011.11.04Goods: Perfume, etcDistinctiveness: Inherently distinciveOwner: Kenzo
Design Reg. No. 1356982 (Reg. Date: Mar. 19, 2009 )Partial Design/Divisional Application(1356996)Article: Handheld Information TerminalApple Inc.
3D trademark and 3D trademarkTokyo District Court - Infringement(May 21, 2014)
Is Reg. TM similar to Third Party TM(trompel'oei )?
Reg. TM (3D mark) Third Party TM (3D mark)
Bag Bag
3D trademark and 3D trademarkTokyo District Court - Infringement(May 21, 2014)
Is Reg. TM similar to Third Party TM (TM(trompel'oei)?
Reg. TM (3D mark) Third Party TM (3D mark)
Bag Bag
3D trademark and 3D trademarkTokyo District Court - Infringement(May 21, 2014)
Yes – Tokyo District Court, May 21, 2014
If a certain view of a 3D trademarks is similar to a 3D trademark, the two trademarks are similar.
Thus, Registered trademark is similar to the Third Party trademark.
Unfair Competition Prevention Law (UCPL) Article 2.1.1
(Requirement)
Indication of origin (e.g. marks)
Widely known (Defendant area)
Similarity of marks
Likelihood of confusion
Infringement of business interests
(Remedies)
Injunction
Damages
Criminal Sanction
Recovery of
reputation
Position - Protected
(Widely Known) - Levi’s Case
(Plaintiff) (Defendant)
Consumer Survey- - 18.3% recognition
Wetsuit Case(Color Combination) - ProtectedOsaka District Court Dec. 13, 1983
Unfair Competition Prevention Law(Old Article 1.1.1)
The subject Color combination is distinguishable sign
(Plaintiff) (Defendant)
Single Color – Not ProtectedSanyo It’s case Osaka High Court March 27, 1997
Unfair Competition Prevention Law (Article 2.1.1)
Dark Blue is not distinguishable sign
(Plaintiff) (Defendant)
SANYO TWINBIRD
Position Marks – Not ProtectedPlaintiff Defendant
(Hummel) (Komaryo)
Not widely known in the defendant product filed(consumer survey: 1-3%)
Unfair Competition Prevention Law (UCPL) Article 2.1.2
(Requirement)
Famous (throughout Japan)
Similarity of marks
Use as a trademark
No Confusion
Infringement of business interests
Similar to Anti-Dilution Law
(Remedies)
Injunction
Damages
Criminal Sanction
Recovery of
Reputation
3D trademark and 3D trademarkTokyo District Court - Protected(May 21, 2014)
Famous TM (3D mark) Third Party TM (3D mark)
Bag Bag
Trademark Law VS UCPL
Trademark Law UCPL(Unfair CompetitionPrevention Law
1 No Sponsorship Confusion Sponsorship Confusion
2 Cover just similar goods or services
Cover Dissimilar goods or services
3 Through out Japan Limited area which mark are well-known
4 Trademark Right No rights
5 Invalidation Trial No Invalidation Trial
Law suite : Basing TM Law and UCPL
Thank you for your attention!
Hiromichi Aoki
Partner, Patent Attorney
Yuasa and Hara
E-mail: [email protected]
WEB: http://www.yuasa-hara.co.jp/english/