The Japan Trademark Law Revision Act of 2021 (Act No. 42) passing congress on May 14, 2021, was promulgated on May 21.
Hot topics of trademark-related revision are:
1. On-line oral hearing
Under the current law, the Japan Patent Office (JPO) has no choice but to hold an oral hearing for administrative proceedings only when the parties are physically present in the oral proceedings. The revised act enables the JPO to hold oral proceedings by video conference.
2. Notifications by email
Under the current law, trademark applicant via the Madrid Protocol gets to know the status of registration only by means of receiving written notification from the JPO. The revised act allows the JPO to electronically send registration notifications to the applicant via the International Bureau by email.
3. Customs enforcement
In view of an increasing number of counterfeits imported for private use, the revised act restricts the counterfeits that were exported from a foreign country via postal mail by a business entity even if purchased by a private person in Japan and constitute trademark infringement at the time when they enter the territory of Japan.
4. Payment of second official fee for registration via the Madrid Protocol
Article 68-30 of the revised act looks attractive to Madrid users indeed. The Madrid users are no longer required to pay a second official fee to the JPO in order to accomplish trademark registration in Japan.
5. Fee increase
The revised act increases official fees for trademarks by more than 10%. Details will be decided by the JPO.
Less than JPY32,900/class (17% increase)
Less than JPY43,60/class (12% increase)
When does the revised act come into force?
The revised act is set to become effective within a year from the promulgation date.
Japan opened the gate to Non-Traditional trademark, namely, color, sound, position, motion, hologram, in April 2015. It seems true that, beyond expectation, JPO has a significantly high hurdle to clear.
543 applications for color marks were filed with the Japan Patent Office (JPO) as of now (Nov 15, 2020). Among them, only 8 color marks are allowed for registration.
1. Tombow Pencil “MONO” (stationery)
2. Seven-Eleven (convenience store)
3. Sumitomo Mitsui Financial Group
4. Sumitomo Mitsui Financial Group
5. Mitsubishi Pencil “UNI” (pencil)
6. Mitsubishi Pencil “HI-UNI” (pencil)
7. Family Mart (convenience store)
8. UCC Ueshima Coffee (canned coffee)
All the registered color marks consist of more than two colors. JPO has yet to register a single case of color per se.
Most single-color marks are rejected due to a lack of distinctiveness and failure to demonstrate acquired distinctiveness. Surprisingly, 492 applications (90.6%) are already rejected or voluntarily withdrawn by the applicant.
Red Bull was unsuccessful in registering a combination of dark blue and silver on energy drinks in class 32.
Hermes also failed to register a three-color combination over various goods in class 14, 18, and 25.
43 applications are in review with the JPO as of now. Remarkably, Christian Louboutin fights for the appeal against the refusal of its iconic red-sole.
On August 27, 2020, the Japan IP High Court ruled to affirm the Japan Patent Office (JPO) decision and rejected TM application no. 2016-34650 for a position mark consisting of fourteen open ellipses built-in grip section of cutting combs in class 21 due to a lack of inherent distinctiveness. [Court case no. Reiwa1(Gyo-ke)10143]
YS Park Cutting Comb
The YS Park Cutting Comb features a non-slip grip section with fourteen air ellipses spaced in 1cm intervals to allow for great flexibility and sectioning.
Allegedly, the comb has been distributed in
many countries and its annual sales increased to 170,000~27,000 pieces for the
last five years.
Plaintiff, a Japanese corporation to distribute the YS Park Cutting Comb since 1989, sought for registration for fourteen open ellipses built-in grip section of the Cutting Comb as a Position Mark (see below) on March 28, 2016.
In Japan, by an enactment of the New Trademark Law in 2014, new types of mark, namely, color, sound, position, motion, hologram, was allowed for trademark registration since April 2015.
On September 17, 2019, the JPO refused the position mark under Article 3(1)(vi) of the Trademark Law by finding that there are plenty of competitor’s combs with a design, pattern, hole, or pit in short intervals on the grip section and it gives rise to an impression of the decorative or functional linear pattern as a whole. If so, relevant consumers at the sight of cutting comb bearing the position mark would just conceive it as a pattern for decorative or functional indication, not as a source indicator. Besides, consecutive use on the YS Park Cutting Comb over a decade would be insufficient to acquire secondary meaning from the produced evidence and business practice in relation to cutting comb. [Appeal case no. 2018-8775]
Article 3(1)(vi) is a provision to
comprehensively prohibit from registering any mark lacking inherent
Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark: (vi) is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.
To contend, the applicant filed a lawsuit to the IP High Court on October 29, 2019, and demanded cancellation of the decision.
IP High Court Ruling
This is the 2nd court case for the IP High Court to hear the registrability of Position Mark.
At the outset, the court stated the distinctiveness of Position Mark shall be assessed as a whole by taking account of a constituent of the mark and its position on goods or services.
The court upheld fact-findings by the JPO that plenty of competitors advertise and provide cutting combs with a pattern, pit, or open holes in short intervals on the grip section to enhance its function. In this regard, it is unlikely that relevant consumers (general consumers on the case) would consider the whole pattern as a source indicator of the comb. The court pointed that plaintiff has promoted features of fourteen open ellipses on YS Park Cutting Comb with an advertisement of “Air Suspension Function” in fact. If so, consumers would find the open holes as a functional indication.
Plaintiff produced interviews and statements by beauticians, hairstylists, school officials/staff of Cosmetology and Beauty school and argued the secondary meaning of the Position mark, however, the court negated the allegation on the ground that such evidence is insufficient and irrelevant to demonstrate acquired distinctiveness since the goods in question shall be broadly targeted to general consumers. Thus, the court decided the JPO did not error in finding secondary meaning in the case.
On February 14 2020, the Japan IP High Court ruled to uphold the Japan Patent Office (JPO) decision and rejected TM application no. 2016-009831 for a 3D position mark consisting of three virtual images of oil stove flame due to a lack of inherent and acquired distinctiveness. [Case no. Reiwa1(Gyo-ke)10125]
TOYOTOMI Oil Stove “Rainbow”
TOYOTOMI CO., LTD., a Japanese company, the world’s first manufacturer of kerosene-fired portable cooking stove in 1952, has allegedly produced their convection type lantern-like design oil stoves in the name of “Rainbow” since 1980.
By means of a heat-resistant glass coated on the inner surface of vertical cylindrical heat chamber of the Rainbow stoves, virtual images of orange flame appear floatingly above actual flame when stoves are in use (see below).
3D Position mark
TOYOTOMI sought for registration for its
virtual images of flame in connection with convection type oil stoves in class
11 as a 3D Position mark (see below) on January 29, 2016.
In a description of the mark, applicant specified:
“applied mark is a position mark consisting of 3D virtual image of three flame rings appeared floatingly above the flame burning on stove at the inside of vertical cylindrical heat chamber. Devices colored in blue and red would not constitute an element of applied mark.“
In Japan, by enactment of the New Trademark Law in 2014, new type of mark, namely, color, sound, position, motion, hologram, was allowed for trademark registration since April 2015.
According to the JPO database, more than
480 position marks were applied for registration under the New Trademark Law
and 78 position marks are successfully registered as of now (Feb 29, 2020).
On March 2, 2018, the JPO examiner refused applied
mark under Article 3(1)(iii) of the Trademark Law based on the fact that mechanism
of 3D virtual shape of three flame rings was exclusively protected under Patent
No. 1508319 which was expired on July 25, 2000. According to technical specifications
of the patent, it is admitted that the 3D shape was purely achieved as a result
of utilitarian functionality and aesthetic functionality. If so, the JPO finds
it inappropriate to register the shape as a trademark because of unfair and detrimental
effect to the public caused by prospective perpetual exclusivity to the shape
itself that should have been a public domain under the Patent Law.
Besides, the JPO considered applied mark has
not acquired distinctiveness (secondary meaning) as a source indicator of
applicant’s products regardless of substantial use for more than three decades.
Subsequently, JPO dismissed an appeal on
the same ground. [Appeal case no. 2018-007479, on August 30, 2019]
To contend, applicant filed a lawsuit to
the IP High Court on September 26, 2019 and demanded cancellation of the
IP High Court ruling
This lawsuit was the very first case for the IP High Court to take up new type of trademark at the open court.
The court held a shape of goods shall not
be protectable as a source indicator if it just aims to achieve function of the
goods from utilitarian and aesthetic viewpoints. If such shape per se is apparently
destined to achieve functions of goods, it shall be refused for registration
under Article 3(1)(iii) of the Trademark Law.
In this regard, the court found, applied mark simply consists of a shape destined to achieve utilitarian and aesthetic functions of goods in question, since it is considered virtual images of floating flame ring aim to increase heating effect of convection type oil stoves.
A mere fact that none of competitors have used
identical or similar shape with applied mark on oil stoves would be irrelevant
to assess distinctiveness of mark under Article 3(1)(iii).
Even if three flame rings do not physically
constitute a shape of oil stoves, the court would see the JPO did not error in
adapting Article 3(1)(iii) on the case.
As for acquired distinctiveness, the court had
no reason to believe applied mark acquired secondary meaning through actual use
based on the produced evidence. TOYOTOMI allegedly held top-rank market share (22.5%)
of convection type oil stoves in Japan and annually delivered 29,000 stoves on
average for the last seven years. However, the court pointed out the TOYOTOMI
Rainbow stoves share just 2% when radiation type oil stoves are counted.
Besides, provided that applied mark is not visible to consumers who visit shops
to purchase oil stoves from appearance of the goods when turned off, it is questionable
whether average consumers would conceive the 3D shape as a source indicator, rather
than a functional shape of oil stoves.
Based on the foregoing, the IP High Court
upheld JPO decision.
Partial revision of the Japan Trademark Law which aims to amend the Article 31 (1) was promulgated on May 17, 2019 and takes effect on May 27, 2019.
Non-exclusive license for famous mark owned by public entity
Existing Trademark Law permits to register a mark which is identical with, or similar to, a famous mark representing (i) the nation, (ii) a local government, (iii) an agency thereof, (iv) a non-profit organization undertaking a business for public interest, or (v) a non-profit activity for public interest [Article 4(1)(vi)], provided that an applicant of the mark corresponds with the public entity from (i) to (iv), or an individual who is managing (v) [Article 4(2)].
Article 31 is a provision pertinent to “non-exclusive trademark license”.
Under the existing law, owner of trademark right (licensor) may grant a non-exclusive permission for the use of its mark to another [Article 31(1)]. In the meantime, the article has an exceptional clause and disallows a non-exclusive license for the use of registered mark which was granted based on Article 4(2).
According to announcement from the Japan Patent Office, “Recently, public entity aiming to encourage regional development and collaboration with industry gets involved in necessity to advertise or promote goods or products originated from the entity. Inter alia, universities/colleges are desirous to secure financial resources, publicize achievements of academic research and increase publicity of the school by means of granting permission for the use of famous mark to a business entity”.
By the revision, the exceptional clause is deleted from Article 31(1).
From May 27, 2019, it enables an owner of trademark right for famous mark, i.e. (i) the nation, (ii) a local government, (iii) an agency thereof, (iv) a non-profit organization undertaking a business for public interest, or (v) an individual who manages non-profit activity for public interest, to grant “non-exclusive license” permission for the use of its famous mark.
It should be noted that the revision does not apply to “exclusive trademark license” provided in Article 30 (1). It remains impermissible.
The Japan Patent Office (JPO) revised its screening criteria to prevent all era names from being registered as trademarks.
The amendment came as the country prepares for the change in May of the current era name following the abdication of Emperor Akihito on April 30, 2019. Japan will start using the new name from May 1 when Crown Prince Naruhito ascends to the throne. The government announced to unveil the new era name on April 1, a month before the Imperial succession, to mitigate the impact of the change on people’s lives.
There was concern that the JPO might be flooded with requests to register the new era name for trademarks during the last month of the Heisei Era, which commenced on Jan. 8, 1989.
According to the JPO, more than 100 trademark registration applications for merchandise and company names using “Heisei” were filed in January of that year.
Under previous criteria, there was room for era names, except Heisei, to be registered as trademarks.
The revised guidelines to ensure trademarks do not feature any era name now clearly state that all era names, in principle, cannot be used for trademarks.
However, even after the revision, familiar product and corporate names already using old era names, such as Meiji Holdings Co. and Taisho Pharmaceutical Co., will continue to be treated as exceptions.
The Japan Trademark Law Revision Act of 2018 (Act No. 33) passing congress on May 23, 2018, was promulgated on May 30 and becomes effective on June 9, 2018.
Revision act sets a high bar for requisite in dividing a trademark application under Article 10 (1) of the Trademark Law.
Article 10(1) of the Trademark Law – Dividing TM application
Dividing trademark application is beneficial to applicant who wants to maintain a prior-application right for every goods/services designated under initial application because division admits divided application to have retroactive effect as if it was filed on the same date with initial application.
Currently, applicant is allowed to divide trademark application as long as the application satisfies following requirements.
Initial application is pending in examination, appeal, or re-examination (Parent application),
Junior application (Child application) relates to the identical mark with Parent application,
Child application designates goods/services within the scope of goods/services originally designated by Parent application, and
Parent application deletes the divided goods/services from designation simultaneously at the time of filing Child application.
For your reference, old Article 10(1) provided that:
“An applicant for trademark registration may file one or more new applications with regard to part of an application which designates two or more goods or services as its designated goods or designated services, provided that the application for trademark registration is pending in examination, trial examination or retrial examination, or that a suit against a trial decision to refuse the application is pending in court.”
Additional requirement for divisional application
From June 9, 2018, in addition to the above, applicant is required to pay an official fee of Parent application.
Where applicant divides trademark application without paying official fee imposed on Parent application, the Japan Patent Office (JPO) does not allow retroactive effect to Child application. Namely, Child application is examined for registrability based on its actual filing date.
JPO decided to revise the article to prevent an entity with fraudulent intent from repeatedly dividing trademark application regardless of non-payment of official fee.