I. Date the Amended Act Comes into Effect

The amended Japanese Trademark Act, which provides that a trademark registration for a non-traditional mark is accepted, came into effect on April 1, 2015. Non-traditional marks which can be registered are as follows:

  1. Color marks (a single color or a combination of colors)
  2. Sound marks
  3. Position marks
  4. Hologram marks
  5. Motion marks

II. Filing a Non-Traditional Trademark Application

1. Color marks

First of all, all color marks will be presumed to lack distinctiveness. That is, color marks are not registered unless the applicant proves that the applied-for color mark has acquired distinctiveness in Japan through extensive and long-standing use.

An applicant needs to indicate the following information and entries:

  1. The term "Color mark"
  2. Specimen of the mark
  3. Detailed explanation of the color mark

    Example: A trademark seeking registration is comprised of red (Red 255, Green 0, and Blue 0), yellow (Red 255, G 255, B 0), and blue (Red 255, Green 0, and Blue 0). These colors are placed in the order of red, yellow, and blue from the top to bottom. Proportion of color combination is 50% red, 30% yellow, and 20% blue.

2．Sound marks

An applicant needs to indicate the following information and entries:

  1. The term "Sound mark"
  2. Specimen of the mark

    Either (i) or (ii) must be indicated:

    1. Staff notation or full score including notes, clefs, tempos, and time signatures. If the mark has linguistic elements, it is possible to include them in the staff notation or full score.
    2. Explanation of the mark indicating the nature of sound and other elements which determine the specific sound, such as the duration of a sound, the number of sounds, volume changes, dynamics, etc.
    REMARKS: Sonograms or tablatures below would not be acceptable.
  3. Detailed explanation of the sound mark, if necessary.
  4. CD-R or DVD-R in which a sound mark has been recorded under mp3 format

3. Position marks

An applicant needs to indicate the following information and entries:

  1. The term "Position mark"
  2. Specimen of the mark

    One or more images which clearly show a specific position seeking registration needs to be attached. This is accomplished by, for example, using a solid line showing the position seeking registration and a broken line showing other parts.
  3. Detailed explanation of the position mark

    Example: A trademark is a position mark in the nature of a star-shaped design with a red color placed at the center of the bottom of the bags.

4. Hologram marks

An applicant needs to indicate the following information and entries:

  1. The term "Hologram mark"
  2. Specimen of the mark

    Two or more images or photos which show a specific change of signs by visual effect (e.g., holography) have to be attached.
  3. Detailed explanation of the hologram mark

    Example: A trademark is a hologram mark which changes signs depending on angles of view. (Assuming that the specimen consists of images A, B, and C), image A is viewed from the left side, image B is viewed from the front, and image C is viewed from the right side.

5. Motion marks

An applicant needs to indicate the following information and entries:

  1. The term "Motion mark"
  2. Specimen of the mark

    Either (i) or (ii) below would be acceptable:

    1. A single image which show a specific movement corresponding to a course of time. In this case, the movement has to be shown by using, for example, an indicating line.
    2. Multiple images which show a specific movement corresponding to a course of time.
  3. Detailed explanation of the motion mark

    Example: A trademark is a motion mark. The motion mark is determined by the 5 images which show a specific motion corresponding to a course of time. The duration of the motion is 5 seconds.

III. Examination of Non-Traditional Trademark Application

As in the case of ordinary trademark applications, the Japan Patent Office examines non-traditional trademark applications based on absolute grounds (descriptiveness, etc.) and relative grounds (similarity compared to earlier marks, likelihood of confusion, etc.). For example, if an applied-for sound mark contains linguistic elements (e.g., ABCD) and the earlier word mark "ABCD" exists, these two marks would be judged to be similar to each other.

IV. Use Right

If someone uses a color mark, sound mark, motion mark, or hologram mark which is the same as or confusingly similar to a registered trademark in Japan without having an intention to cause unfair competition before the Amended Act comes into effect, he/she holds a use right for the mark within the scope of his/her actually existing business at the time of the effective date of the Amended Act. This use right is not granted to a prior user of a position mark.

The Amended Act also provides that if non-traditional marks (exclusive of position marks) have been famous among traders before the Amended Act comes into effect, users of said famous non-traditional marks hold use rights for their non-traditional marks, which are not limited to the scope of their actually existing business at the time of the effective date of the Amended Act.

Originally published April 6, 2015

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.