-A New Frontier of Trademark Practice in Japan-

Hiromichi Aoki

Patent Attorney

Yuasa and Hara

Tokyo, Japan

APAA

Okinawa, Japan

November 15, 2015

Contents

History

Definition of Trademarks

Statistics

Why register it ?

Who registers it ?

Where is it used ?

Contents

How to prepare Applications

Requirement for registration

Applications and Registrations

Overlap of Trademark and Design

Trademark Infringement and Unfair Competition Prevention Law Cases

History

1. Trademark Law

- 3D Mark : April 1, 1977

- Color, Moving, Hologram, Position, Sound : April 1, 2015

2. Unfair Competition Prevention Law(UCPL)

- long period of time

Definition of Trademarks

Article 2.1 of Trademark Law“Trademark” in this Law means any marks among

those which are perceptible by human beings: characters, figures, signs, three-dimensional shapes, colors, or any combination thereof, sounds or other marks as prescribed by Cabinet Order.

- No Graphical Representation unlike in EU

- No Distinguishability unlike in EU or USA

- Smell, Touch, Taste, Moving Sound Marks are not protectable.

Moving Sound Mark in TaiwanReg. No. :1648265 Goods: Class 5Owner : Unicharm Corporation (Japanese Corporation)

Statistics in Japan(as of Oct. 23, 2015)

Type of Mark No. of ApplicationsFrom April 1, 2015(decision of registration)

1 Color 423(0)

2 Moving 70(16)

3 Hologram 11(1)

4 Position 214(5)

5 Sounds 321(21)

Total 1039(43)

Type of Mark No. of RegistrationsFrom April 1, 1997

1 3D 2034

Who registers it ?

B2C (Business to Consumer)

B2B (Business to Business)

B2G (Business to Government)

Global Company

Why register it ?

Distinguishability

Worldwide recognition (not word)

Investment(e.g. sound)

Commercial Magnetism

Good Origin Identifiers

Good Tool for Branding (Bonding)

Good Tool for Marketing

Where is it used ?

Products

Packages

Touch Points-Envelope

-Motor vehicles

-WEB

-TV CM

Where is it used ?

Touch Points-Store design

-Advertising Display

-Shelf

-Uniform

-Lounge

-Event

-Direct Mail

-Services

-After Care

How to prepare applications

3D- Type of Mark; Drawing

Color, Moving, Hologram, Position

- Type of Mark; Drawing; Explanation of Mark

Sounds- Type of Mark; Staff notation, onomatopoetic word or imitative word; MP3 Sound clip

(Unlike in EU, sonogram and oscillogram are not acceptable)

Requirement for registration

Unfair Competition Prevention Law(3 years)

Design Law(20 Years from registration date)

Copyright Law(50 years from death of author)

Trademark Law (no Limitation)

Requirements for registration

Reason for Opposition and Invalidation trial

Description Requirements

Distinguishability(characteristics of goods)

Secondary Meaning

Inherent characteristics of goods(Functionality)

Similarity of Prior Marks

Public Order and Morality

Description Requirement(Article 5.5 of Trademark Law)

If the explanation of mark or MP3 file does not identify the mark, application or registration will be rejected or invalidated.

There is no Time Limitation.

Inherent Characteristic of Goods(Functionality/Article 4.1.18 of

Trademark Law)

E.g. Black color for tire

Including

(1) Aesthetic Functionality in USA (Article 2.(e)(5) of Lanham Act)?

(2) Substantial Value in EU(Article 7(e)(3) of Community Trademark Law) ?

Similarity of MarksTokyo High Court(Octopus Case, Jan. 31, 2001)

Is Junior TM similar to Senior TM ?Junior TM (3D mark) Senior TM (2D mark)

Foods (takoyaki) Foods (takoyaki)

3D trademark and 2D trademarkTokyo High Court(Octopus Case, Jan. 31, 2001)

Takoyaki = Octopus dumpling

3D trademark and 2D trademarkTokyo High Court(Octopus Case, Jan. 31, 2001)

Yes – Tokyo High Court, Jan. 31, 2001

If a certain view of a 3D trademark is similar to a 2D trademark, the two trademarks are similar.

Both trademarks are personalized octopus wearing brow band. Leg shapes and positions are almost the same.

Thus, Junior trademark is similar to Senior trademark.

Applications and Registrations

3D Marks

Is 3D Mark inherently

distinctive for “flashlight” ?

No – IP High Court, June 27, 2007

However, this mark was finally registered on ground of having secondary meaning. The lettering of the word mark “MINI MAGLITE” is narrow and small overall, and thus scarcely attracts attention. Configuration of goods per se obtained secondary meaning.

3D Trademarks – Maglite Case

Is 3D mark inherently

distinctive for a beverage ?

No– IP High Court, 3rd Division May 29, 2008

However, this mark was finally registered by proving secondary meaning. Unlike in the Maglite case, the famous mark “Coca-Cola” widely appeared on the bottle. Consumer survey results (60% to 80% recognition)supported proof of secondary meaning.

3D Trademarks – Coca-Cola Case

Is 3D mark inherently

distinctive for a beverage ?

No– IP High Court, Nov. 16, 2010

3D Trademarks – Yakult

However, this mark was finally registered by proving secondary meaning. Unlike in the Maglite case, the famous mark “YAKULT” widely appeared on the bottle and similar bottles existed(see below). Consumer survey results (98% recognition) supported proof of secondary meaning. Center is Yakult.

3D Trademarks –Yakult

Is 3D mark inherently

distinctive for beauty products (cosmetics),

soaps, perfumery, cosmetics?

No– IP High Court, April 21, 2011

However, this mark was finally registered by proving secondary meaning. No consumer survey was conducted. However, unique shape and over 15 years’ sales support this case.

3D Trademarks– Jean Paul Gaultier

Is 3D mark inherently

distinctive for an armchair ?

No– IP High Court, 3rd Division June 29, 2011

However, this mark was finally registered by proving secondary meaning. No consumer survey was conducted. However, eliminating counterfeit goods, unique shape, high sales amount, high advertising fee supports this case.

3D Trademarks– Y chair(Y stolen)

Is 3D mark inherently distinctive

for chocolate ?

Yes- IP High Court, 4th Division, June 30, 2008

It is both distinctive and novel, and may act as an indicator to general consumers upon deciding what chocolate to buy on a future occasion (memorable).

3D Trademarks – GuyLian Case

Inherent Distinctiveness

Maglite, Coca-Cola and Y chair are severe (3rd Div. IP High Court). On the other hand, GuyLian case (4th Div. IP High Court) is lenient.

3rd Div. IP High Court considered the balance with limited duration of patent and design rights. However, 4th Div. IP High Court did not consider it. This is the reason for the different standards.

3D Trademarks - Analysis

Color Marks

Appl. No. 2015-030294Class 38 (Telecommunication services)NTT Docomo

Explanation of Marks：Red Color, RGB (R:204,

G:0,B51) RGB=Red, Green, Blue

Appl. No. 2015-030540Class 39 (delivery of confidential correspondence)Japan Post Holdings Co., Ltd.

Explanation of Marks：Red Color, RGB (R:204, G:0, B:0)

Appl. No. ２０１５－３０６８９Class 35 (auction)Yahoo! Inc.

Explanation of Marks：Red Color, RGB (R:255, G:0, B51)

Appl. No. 2015-029938Class 32 (energy drink )Red Bull AG

Explanation of Marks：Combination colors of Blue (Ral: 5002),

Silver (Ral: 9006). The distribution and ratio of the colors to each

other is 50%-50%.

Appl. No. ２０１５－３０６９６Class 12 (Motor Bicycle)Kawasaki

Explanation of Marks: Lam Green, RGB(R:105, G190, B40). This color is used for tank of motor bicycle.

Appl. No. ２０１５－２９９２１Class 25 (high-heeled shoes for women)Christian Lubtan

Explanation of Marks：The mark consists of a red (Pantone 18-1663TP) outsole on High-heeled shoes. The dotted lines are not part of the mark but are intended only to show placement of the mark.

Appl. No. ２０１５－３３０５８Class 25 (Shoes for women)K.K. moda clea (Japanese corporation)

Explanation of Marks ： Red Color, RGB ( R:166, G25, B46). The dotted lines are not part of the mark but are intended only to show placement of the mark.

Similar in France

「Pantone212（pink）」 and 「Pantone219（pink）」 are similar(Jan. 30, 2001, France)

(Plaintiff：Pantone 212) (Defendant：Pantone 219)

38

Appl. No. ２０１５－３７８８３Class 39 (organizing trips)Japan Travel Bureau (JTB)

Explanation of Marks：Combination of Red, Gray and White. RGB (R:2014,

G:0, B:0) for Red, RGB (R:153, G:153, B:153) for gray, RGB (R:255, G:255,

B:255) for white. White-53.5%, Red-8%, Gray-38.5%.

（Ticket holder）

Sound Marks

Appl. No. ２０１５－２９８７７Sound Mark by staff notationClass 9, 35, 38 Ｎｏｋｉａ

Position Marks

Appl. No. 2015-030237

Class 9 (Computer server)

Fujitsu

Explanation of Marks：Position Marks, The dotted lines

are not part of the mark but are intended only to show

placement of the mark.

Appl. No. 2015-030388(Position Mark)Class 28 (slot machine)Kita Denshi

Explanation of Mark：Position Mark. The dotted lines are

not part of the mark but are intended only to show

placement of the mark.

HappySign !

Appl. No. 2015-030377 (Sound Mark)Class 28 (slot machine)Kita Denshi

Sound Mark：

Metallic sound like

“GA KON”

for 1 second

HappySound !

Appl. No. ２０１５－３００９４Class 25 (shoes, sport shoes）Hummel Holdings AS

Explanation of Mark： Position Mark. The dotted lines are

not part of the mark but are intended only to show

placement of the mark.

Appl. No. ２０１５－３０３６２Class 25 (shirts）Edwin (Japanese Corporation)

Explanation of Marks：Position Marks, Red tab with word “EDWIN”. The dotted lines are not part of the mark but are intended only to show placement of the mark.

Moving Marks

Appl. No. ２０１５－３０２２２Class ３３（Sake）Kikumasamune shuzo K.K.

Appl. No. ２０１５－４０４７３Class 5 (Deodorant fragrances）

Ｐ＆Ｇ

Appl. No. ２０１５－３０２２０Class ９，３５，３７，３８，４１，４２Fujitsu

Hologram Marks

Appl. No. ２０１５－７６９１６Class ３６ (Credit Card Services)K.K. JCB

Explanation of Mark:：Hologram Marks, etc.

Appl. No. ２０１５－３０１９８

Class 36 (Gift Card Services)Sumitomo Mitsui Card Co., Ltd.

Explanation of Mark：Hologram Marks, etc.

Overlap of Trademarks and Designs

Overlap of Trademarks and Designs

Priority is decided on the basis of application date of trademark and design.

Later right holder cannot use its trademark or design(Article 29 of Trademark Law and Article 26 of Design Law).

Design Reg. No. ９４６２０９－１ /Reg. date:1999.12.17Articles: Speaker PhoneCreator: Scott H WakefieldOwner : Polycom Inc.

TM Reg. No. : ５３９４４３１ /Reg. date: 2011.2.25Goods: Speaker phoneDistinctiveness: inherently distinctiveOwner : Polycom Inc.

Design Reg. No. １１９１１８６ :/Reg. date: 2003.10.10Articles: Plastic EraserCreator: Hideo KanbaraOwner: Kokuyo

TM Reg. No. : 5444010 /Reg. date: 2011.10.14

Goods: Plastic eraserDistinctiveness: Secondary MeaningOwner: Kokuyo

Design Reg. No. :1365260/Reg. date: 2009.6.19Articles: Container for perfumeCreator: Serge Mansau (sculptor)Owner: Kenzo

TM Reg. No. :5449039/Reg. date: 2011.11.04Goods: Perfume, etcDistinctiveness: Inherently distinciveOwner: Kenzo

Design Reg. No. １３５６９８２ (Reg. Date: Mar. 19, 2009 )Partial Design/Divisional Application(1356996)Article: Handheld Information TerminalApple Inc.

Trademark Registrations in Classes 9, etc.

5215980 5460782 5460783 5533070

5579366 5541284 5474781

Trademark Infringement and Unfair

Competition Prevention Law Cases

3D trademark and 3D trademarkTokyo District Court - Infringement(May 21, 2014)

Is Reg. TM similar to Third Party TM(trompel'oei )?

Reg. TM (3D mark) Third Party TM (3D mark)

Bag Bag

3D trademark and 3D trademarkTokyo District Court - Infringement(May 21, 2014)

Is Reg. TM similar to Third Party TM (TM(trompel'oei)?

Reg. TM (3D mark) Third Party TM (3D mark)

Bag Bag

3D trademark and 3D trademarkTokyo District Court - Infringement(May 21, 2014)

Yes – Tokyo District Court, May 21, 2014

If a certain view of a 3D trademarks is similar to a 3D trademark, the two trademarks are similar.

Thus, Registered trademark is similar to the Third Party trademark.

Unfair Competition Prevention Law (UCPL) Article 2.1.1

(Requirement)

Indication of origin (e.g. marks)

Widely known (Defendant area)

Similarity of marks

Likelihood of confusion

Infringement of business interests

(Remedies)

Injunction

Damages

Criminal Sanction

Recovery of

reputation

3D – ProtectedPlaintiff Defendant

(Apple) (Sotec)

3D – ProtectedPlaintiff Defendant

3D – ProtectedPlaintiff Defendant

Position - Protected

(Widely Known) - Levi’s Case

(Plaintiff) (Defendant)

Consumer Survey- - 18.3% recognition

Moving Mark – ProtectedPlaintiff Defendant

Now! Changed

Wetsuit Case(Color Combination) - ProtectedOsaka District Court Dec. 13, 1983

Unfair Competition Prevention Law(Old Article 1.1.1)

The subject Color combination is distinguishable sign

（Plaintiff） （Defendant）

Single Color – Not ProtectedSanyo It’s case Osaka High Court March 27, 1997

Unfair Competition Prevention Law (Article 2.1.1)

Dark Blue is not distinguishable sign

（Plaintiff） （Defendant）

SANYO TWINBIRD

3D – Not ProtectedPlaintiff Defendant

Position Marks – Not ProtectedPlaintiff Defendant

(Hummel) (Komaryo)

Not widely known in the defendant product filed(consumer survey: 1-3%)

Unfair Competition Prevention Law (UCPL) Article 2.1.2

(Requirement)

Famous (throughout Japan)

Similarity of marks

Use as a trademark

No Confusion

Infringement of business interests

Similar to Anti-Dilution Law

(Remedies)

Injunction

Damages

Criminal Sanction

Recovery of

Reputation

3D trademark and 3D trademarkTokyo District Court - Protected(May 21, 2014)

Famous TM (3D mark) Third Party TM (3D mark)

Bag Bag

Trademark Law VS UCPL

Trademark Law UCPL(Unfair CompetitionPrevention Law

1 No Sponsorship Confusion Sponsorship Confusion

2 Cover just similar goods or services

Cover Dissimilar goods or services

3 Through out Japan Limited area which mark are well-known

4 Trademark Right No rights

5 Invalidation Trial No Invalidation Trial

Law suite : Basing TM Law and UCPL

Thank you for your attention!

Hiromichi Aoki

Partner, Patent Attorney

Yuasa and Hara

E-mail: aoki-tm@yuasa-hara.co.jp

WEB: http://www.yuasa-hara.co.jp/english/