1. 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

2. 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

3. “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

4. “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

5. Possible registrations ~ Colors~
CTM Reg
Deutsche Post
Class 39 “Transportation”
CTM Reg
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.

6. Possible registrations ~ Sounds~
US Reg
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
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

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

8. Possible registrations ~ Holograms ~
KR Reg
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.

9. Possible registrations ~ Position ~
US Reg
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
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.

10. 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

11. 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

12. 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

13. 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

14. Thank you for your kind attention!
If you have any questions, please contact: