SOEI Patent and Law Firm AIPLA-JPAA Pre-Meeting October 21, 2014 Recent Developments of Trademark Law in Japan ~Introduction of registration for non-traditional marks~ Tomoya Kurokawa SOEI Patent and Law Firm

Contents Definition of “trademark” under the law Examples of possible registration for non-traditional trademark How to file non-traditional trademark Effective date of the amended law

“Trademark” under the current law A “trademark” is: “any characters, figures, signs or three-dimensional shapes, or any combination thereof, or any combination thereof with colors.” Color → No Sound → No Motion → No Hologram → No Position → No Texture → No Taste → No Fragrance → No

“Trademark” under the amended law A “trademark” is: (1) recognizable by human perception, and comprises, (2) (i) characters, figures, signs, three-dimensional shapes or colors, or (ii) any combination thereof, or (iii) sounds, or (iv) other matters which designated by Cabinet Order. Color → Yes Sound → Yes Motion → Yes Hologram → Yes Position → Yes Texture → No Taste → No Fragrance → No

Possible registrations ~ Colors~ CTM Reg. 5978283 Deutsche Post Class 39 “Transportation” CTM Reg. 3793361 Mars Petcare UK Class 31 “Foodstuffs for cats” etc. Actual Use: Quoted from their Website Actual Use: Quoted from their Website Color itself is NOT inherently distinctive. So, applicant has to prove its secondary meaning based on extensive use of the color(s) for specific products.

Possible registrations ~ Sounds~ US Reg. 4361853 Samsung Electronics Class 9 “Mobile telephones” etc. Sound of a bell playing a B4 dotted eighth note, a B4 sixteenth note, an F#5 sixteenth note, a B5 sixteenth note, an A#5 eighth note, and an F#5 half note. US Reg. 2442140 Yahoo! Class 42 “Computer services” etc. Sound of a human voice yodeling "YAHOO". Sounds which goods usually generate are NOT distinctive. ex.) engine starter sound for vehicle engine Music is NOT distinctive. ex.) classical music, pop music

Possible registrations ~ Motions ~ US Reg. 2442140 Twentieth Century Fox Film Class 9 “Motion picture films” etc. CTM Reg. 1864610 Berggren Class 41 “Education” etc. Characters, figures, signs, three-dimensional shapes or colors constituting a mark must alter with time. Allowed Not allowed Allowed

Possible registrations ~ Holograms ~ KR Reg. 4009318260000 Give&Take system Class 14 “Leather watch band” etc. Characters, figures, signs, three-dimensional shapes or colors constituting a mark must alter due to visual effects.

Possible registrations ~ Position ~ US Reg. 2442140 Christian Louboutin Class 25 “footwear” The mark consists of a red lacquered outsole on footwear that contrasts with the color of the adjoining ("upper") portion of the shoe. US Reg. 2363544 IBM Class 9 “Cursor control device” The mark consists of the color red used on the cursor control device component of the goods. If the portion described with solid line does NOT have distinctiveness, the mark is NOT distinctive because position itself is NOT inherently distinctive. So, applicant has to prove its secondary meaning based on extensive use of the color(s) for specific products.

How to file non-traditional trademark Trademark type “Color mark” Trademark (specimen) ex) Trademark description ex) The trademark consists of the color purple (pantone 248C). Proof of acquired distinctiveness (may be filed later) Color Mark Trademark type “Sound mark” Trademark (specimen) Provide score, or explanation of sounds if it is unavailable. Audio file including sound mark Sound Mark

How to file non-traditional trademark Trademark type “Motion mark” Trademark (specimen) ex) Trademark description Explain elements of mark and alteration of the elements with time. Motion Mark Trademark type “Hologram mark” Trademark (specimen) ex) Trademark description Explain elements of mark and alteration of the elements due to visual effects. Hologram Mark

How to file non-traditional trademark Trademark type “Position mark” Trademark (specimen) ex) Trademark description ex) Explain elements of mark and the position where the elements are attached. Proof of acquired distinctiveness (may be filed later) Position Mark

Effective date of the amended law - must be no later than 14 May 2015 - is expected sometime in April or May 2015 Examination guideline for non-traditional mark: - is still under discussion - is expected to be finalized by December 2014

Thank you for your kind attention! If you have any questions, please contact: kurokawa@soei-patent.co.jp