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Sunday, 19 July 2015

Letter from Japan 2: non-traditional trade marks embraced as new tradition?

From one-time guest Kat and Class 46 trade mark blogger Laetitia Lagarde comes the second of an occasional series of blog posts from Japan, where she is spending some time imbibing the local IP experience, making friends and practising her karaoke technique. Her first offering, on product placement, can be read here. And now for the second one:

Nowadays trade marks come in all shapes and colours, sometimes even smells, and numerous brands keeping up with the modern times have evolved into “fluid logos”. 

Strawberries' marketing power: in good taste?
In Europe, non-traditional trade marks such as 3D signs have been problematic to register lately (see here) and it seems that EU trade mark reform (on which see the IPKat's coverage here) will make it even more difficult to obtain protection for shapes. However, the good news is that the new TM Directive and Regulation overall aim at granting wider protection for non-traditional trade marks by removing the “requirement of graphical representation” from Article 4 of CMTR -– meaning that the “smell of ripe strawberries” (definitely rejected by the General Court in Case T-305/04) and the “taste of artificial strawberry flavour” will not be barred from registration under that ground. 
It is well known that Japan is a land of contrasts and contradictions which makes it so fascinating. So it might be odd for some practitioners, that in such an incredibly technologically advanced nation, it was not possible to register for example, colour marks, until April 1, 2015. An amendment to the Trade Mark Act (Act No. 127 of 1959, as amended) was introduced in 2014 and the protection of non-traditional marks became effective as of four months ago. 
Under the amended Act, “any character(s), figure(s), sign(s), three-dimensional shape(s) or colour(s), or any combination thereof, sound(s), or other(s) specified by a Cabinet Order, recognizable by human perception, will be protected as a trade mark (Article 2, Paragraph 1). Currently, protection is not granted for olfactory, touch or taste marks but future registration could become possible since those kinds of marks fall under the “human perception” requirement. (see this pamphlet prepared by the JPO in Japanese).

Similarly to Europe, three-dimensional marks can be registered more easily in Japan if their representation consists of the configuration of goods with words marks or if they have acquired a secondary meaning (see IP High Court Judgment 2011, JEAN PAUL GAULTIER “CLASSIQUE” perfume bottle). Protection for packaging per se and for colours is also possible under Japan's Unfair Competition Prevention Act: Article 2(1) prohibits use or sale of goods likely to cause confusion with other widely-known indications among consumers. Regarding colour marks, like any other jurisdiction, Japan requires a sign to be not functional, inherently distinctive or have acquired distinctiveness -in practice the latter standard will probably need to be demonstrated to secure rights.

The recent extension of registrable rights was received positively since brand owners were apparently anxiously waiting for this reform. According to the Japan trademark database, currently 288 applications for registration of “colour per se” trade marks are pending, as are 201 applications for registration of sound marks, 47 applications for registration of motion marks, three for holograms and 142 for position marks. The JPO examiners must determine whether a trade mark fulfils both absolute and relative grounds requirements. Thus, in about 7-12 months, applicants will discover whether the following applications have passed the test: 
* Application No.2015-029822 for ‘moving belly ripped shirt’ as a motion mark for ‘herbal medicines’. An approximate translation of the trade mark description reads:   
"Male abdomen bulges, after the button of the shirt is burst, the abdomen is cracking up and down, the screen switches after the first half of the until you see the cross-section (FIGS. 1 to 6), the latter part (Fig. 7 in through 20), herbal medicines is taken in the abdomen of the cross-section, then, how the burning out is represented. This motion trade mark, as a whole, is about 5 seconds". 
* Application No. 2015-029921 for  “women's high-heeled shoes” filed by クリスチャン ルブタン or ‘Christian Louboutin’ (foreign names are usually written in Katakana, one of the three Japanese alphabets). Eight days after Louboutin’s application (depicted on the left), the colour trade mark on right right was applied for: Application No.2015-033058 by株式会社モ-ダ・クレア (Ltd. Mode – Da Claire) for Class 25.

Keep a look out for these exciting new times in trade mark practice. Personally this Kat looks forward to seeing more hologram brands and not just hologram singers –- which have already proved popular in Japan! (=^^=).

Japan's singing sensation Hatsune Miku is a hologram, see here 
Japanese traditional cat art here 

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