Japan: Revision of Japanese Trademark Examination Guideline 2016
by Hirohito Katsunuma (Kyowa Patent and Law office, Japan)
The Japanese Trademark Examination Guidelines have been revised for the first time in 45 years in order to improve predictability of the results of trademark examinations, and to make trademark examination clearer and easier to understand. It became effective on April 1, 2016.
The revision was made to facilitate registration of the following trademarks:
- Titles of books (Japanese Trademark Law Art. 3(1)(ⅲ) )
- Slogans or catch phrases (Japanese Trademark Law Art. 3(1)(vi) )
- Distinctiveness acquired through use (Japanese Trademark Law Art. 3(2) )
- A trademark which is identical with, or similar to, a famous mark indicating a state or a local public entity (Japanese Trademark Law Art. 4(1)(vi) )
Registration of catch-phrase-type trademarks has attracted much interest, so the revised examination guideline for these trademarks is explained hereunder.
“A catch phrase” is “a sales message intended to attract the attention of consumers or to impress consumers by advertisement”. A catch phrase is recognized as an important factor in advertising. Under the previous Trademark Examination Guidelines, “a catch-phrase-type trademark” was rejected in principle because it was considered that consumers are unable to recognize the catch phrase as a trademark and that the catch phrase is generally insufficient to distinguish goods or services from others. However, there were a number of issues in practice, as follows:
- No objective criterion was given in the Examination Guidelines to judge whether a trademark consisted of a catch phrase or not.
- Many examiners’ rejection decisions were overturned in appeals against the examiners’ decisions. In fact, more than 60% of the trademark applications that were rejected by examiners under the stipulation of Article 3(1)(ix) on the ground that they were catch phrases, were overturned and registration allowed.
After revision, a trademark will be registered even if the trademark consists of a catch phrase, provided the trademark falls within the following case 1 or 2.
The catch phrase is not solely used in a typical way as an advertisement for goods or services.
The followings are examples of this case:
(1) The catch phrase has no direct or concrete meaning in relation to the designated goods or the designated services;
(2) The applicant has used the catch phrase for a certain time period as a trademark so that it could distinguish its goods and services from those of others, and a third party does not use a catch phrase which is identical or similar to the applied trademark in advertising its goods or services.
The catch phrase does not merely indicate a commonplace corporate philosophy or a management policy.
The following is an example of this case:
(1) While the applicant has used the catch phrase for a certain time period as a trademark distinguishing its goods and services from others, no third party has used a catch phrase, which is identical or similar to that of the applied trademark, as its corporate philosophy or its management policy.
The revised Japanese Trademark Examination Guidelines gives examples of trademarks (catch-phrase-type trademarks) generally lacking distinctiveness. It also gives applicants a greater ability to predict the result of examination under Japanese Trademark Law Article 3(1)(ix). For companies, it becomes easier to protect their catch phrases used for a long time in good faith.
The JPO will continue to review the guidelines next year.