For reference, the total number of non-traditional trademark applications in USA and CTM is as follows.

 USA non-traditional trademark applications from 1974 to February 9, 2012

 CTM non-traditional trademark applications from 1996 to February 2012

 It is clear from the above charts that the number of non-traditional trademark applications in Japan are increasing with remarkable speed.

2. Reduction of trademark registration fees and trademark renewal fees

 It is reported that trademark registration fees will be reduced approx. 25% and trademark renewal fees will be reduced approx. 20% before very long.  Upon receipt of further information, we would provide the information.

3. Introduction of IP Judgement
 

 Court: Intellectual Property High Court, First Division

 Case number: 2014 (Gyo-Ke) 10089

 Date: February 25, 2015

Snapshot

 The plaintiff, Sharp Corporation of Japan, owned the Japanese T.M. Reg. No. 5451821 “IGZO” (hereinafter referred to as ‘subject registration’) (details are as follows).  The defendant, Japan Science and Technology Agency, took a partial invalidation action against the subject registration on the grounds that the mark “IGZO” is well known as an abbreviation of “an oxide consisting of Indium, Gallium, Zinc and Oxygen” and is recognized as raw materials of the designated goods in question and, therefore, the mark “IGZO” should be descriptive and non-distinctive, and does not work as a trademark.

Trademark:  IGZO (herein after referred to as ‘subject mark’)

Goods:       Electric flat irons; Electric hair curlers; Telecommunication machines and apparatus; Electronic machines, apparatus and their parts; Batteries and cells; Electric wires and cables; Power distribution or control machines and apparatus (Class 9)

          (The invalidation action was submitted against the above underlined goods.)

 The JPO decided that the subject registration was invalid in relation to the designated goods in question.  The plaintiff filed an appeal at IP High Court.

Summary

The issues in this case are as follows:

(I)          Is the subject mark considered as a descriptive term of raw materials?

(II)         Whose recognition and knowledge should be based to determine the descriptiveness of the subject mark?

(I) Is the subject mark considered as a description of raw material?

 The plaintiff argued that the subject mark is not a descriptive term of raw materials for the following reasons:

(a)  The designated goods in question consist of many kinds of materials and elements.  Oxide indium, Gallium and Zinc are oxides used for a very small part of the materials and elements and, therefore, the subject mark should not be considered as a descriptive term of raw materials of the designated goods;

(b)  Most of general consumers never directly come up with the designated goods in question from the subject mark.

 In regard to the above argument, the Court held that:

(a’) Even though materials are contained too little in a product or it is used as a very small part, traders will naturally think that the product contains such materials described as a mark in the case such materials affect quality, performance, etc. of the product or it is reasonable for traders to use or describe the material name; and

(b’) It is not necessary to actually use materials described as a mark.  It is sufficient that traders expect products would contain the materials described as a mark.

(II) Whose recognition and knowledge should be based to determine the descriptiveness of the subject mark?

 The plaintiff argued that the designated goods in question are used by general consumers and, therefore, the recognition and knowledge of the general consumers should be based on to determine the descriptiveness of the subject mark.  In addition, they argued that the term “IGZO” appears in professional literatures general consumers seldom refer to and, therefore, the general consumers do not recognize the subject mark as a name of raw materials.

 In regard to the above argument, the Court held that:

- whether the mark is descriptive or not should be decided on the basis of recognition and knowledge of not only general consumers but also traders; and

- it is not fair to allow a specific trader to monopolize a term which is recognized by traders as a name of materials.

Conclusion

 Based on the above, the Court ruled:

(i) The term “IGZO” is well known as an abbreviation of “an oxide consisting of Indium, Gallium, Zinc and Oxygen”;

(ii) Suppose the case the subject mark is used for “notebook computers,” “liquid crystal television,” “smartphone” etc. Such products contain “display panel” and the performance of “display” affects the quality of products.  The “oxide consisting of Indium, Gallium, Zinc and Oxygen” is a raw material of the display panel and, therefore, the material “IGZO” affects the quality of the products through the display panel;

(iii) The oxide consists of the new material and receives a lot of attention from traders; and

(iv) The subject mark is descriptive and non-distinctive in relation to the designated goods in question.

Comments

 In Japan, the subject mark had been widely used in the media, e.g., commercials, newspaper, advertisement, etc.

(Clip from a commercial)

 Most of general consumers, who do not have scientific knowledge and background, would have recognized the subject mark as a coined term and a valid trademark.  Through this case, we re-realize the difficulty in determining the descriptiveness of a trademark.