1. Non-traditional trademarks approved for registration

On October 27, 2015, the Japan Patent Office (“JPO”) announced cases where non-traditional trademarks had been allowed to be registered for the first time. The breakdown of registrations is as follows.

Please note that the JPO has not yet issued any results of examinations of color trademarks.

*Examples of registered non-traditional trademarks:

“Sound”     Reg. No. 5804299 (Hisamitsu Pharmaceutical Co. Inc.)

“Position”     Reg. No. 5807881 (Kabushiki Kaisha EDWIN)

“Motion”    Reg. No. 5808807 (FUJITSU LIMITED)

2.Three-dimensional trademark

The Board of Appeal held in 2014 that a three-dimensional trademark for a two-wheeled motor vehicle, which was known as “Honda Super Cub,” should be allowed to be registered because such trademark had the secondary meaning.

The three-dimensional trademark of “Super Cub”

The article 3 (iii) of the Trademark Law establishes that a trademark which consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, ・・・・・ shape (including shape of packages)・・・・should not be registered. Based on the article 3 (iii), i.e., non-distinctiveness, “Honda Super Cub” was rejected for registration at the examination stage. At the appeal stage, the Board of Appeal concluded that “Honda Super Cub” was a trademark solely consisting of a shape of a two-wheeled motor vehicle in a common manner, and, therefore, the trademark application fell under the article 3 (iii). On the other hand, the Board of Appeal concluded that “Honda Super Cub” had the secondary meaning for the following reasons:

As shown in the “Honda Super Cub” case, under the Japanese trademark practice, it is still difficult to register a simple shape of a product as a three-dimensional trademark without a “distinctive logo mark.” In order to register a simple shape as a three-dimensional trademark, an applicant has to prove that such shape is well-known by submitting huge proofs, e.g., advertisements, sales figures, market shares, etc.

Finally we introduce some important cases in which three-dimensional trademarks were allowed to be registered because they had the secondary meaning.

(i) “Coca Cola” case (Case H19 (Gyo-Ke) No. 10215 (Sup. Ct., July 2, 2003))

In this case, the issue was whether the reason why Coca-Cola bottles had been well known was because of their “Coca-Cola” trademark or because of the shape of the bottle itself. The plaintiff efficiently utilized a result of a questionnaire investigation in order to argue that consumers can recognize the shape of the bottle without the logo such as “Coca-Cola.” The court concluded that the shape of the “Coca-Cola” bottle without the “Coca- Cola logo mark” had the secondary meaning.

(ii) “Mag light” case (Case H18 (Gyo-Ke) No, 10555 (IP High Ct., June 27, 2007)

In this case, the court decided that the mark consisted of a shape in a common manner. Further, the court concluded that the mark had the secondary meaning and the mark should be registered.

(iii) “Yakult” case (Case H22 (Gyo-Ke) No. 10169 (IP High Ct., November 16, 2010)

The Board of Appeal rejected the above trademark application because they determined that the well-known logo “Yakult” was always put on the bottle and, therefore, the shape of the bottle itself without the logo was not recognized as the “Yakult” bottle. However, the court concluded that the shape of the bottle has the secondary meaning even without the well-known logo mark “Yakult.” In this case, a result of a questionnaire investigation also worked in favor of the plaintiff like the “Coca Cola” case.

(iv) “Y chair” case (Case H22 (Gyo-Ke) No. 10253(IP High Ct., June 29, 2011)

The Board of Appeal rejected the above trademark application because the shape of the above chair was selected in order to preserve a function of the chair and, therefore, such shape did not have distinctiveness. However, the court concluded that the shape of chair has the secondary meaning in consideration of a period of use, a volume of advertisement, sales volume, etc.