Amendments of Japanese Trademark Law Sakae Miyanaga Partner, TM Attorney 

1. Overview Amendments of Law The Trademark Law was amended and implemented on April 1, 2015. Major changes:  Protection of non-traditional marks  Expansion of standing of regionally based collective marks 2 

2. New Types of Marks (1) Protectable non-traditional marks  Sound marks  Position marks*  Movement marks**  Hologram marks  Color marks * Position mark is specified by the position in which they appear or are fixed on a particular product or service. **Movement mark is a sign which changes in the formation or status of its mark elements. 3 

(2) Change of definition of trademark (Article 2(1)) (current) … any character(s), figure(s), sign(s) or three-dimensional shape(s), or any combination thereof, or any combination thereof with colors which is: (i) used in connection with the goods of a person who produces, certifies or assigns the goods as a business; or (ii) used in connection with the services of a person who provides or certifies the services as a business (except those provided for in the preceding item). (new) … any character(s), figure(s), sign(s), three-dimensional shape(s), colors or any combination thereof, sounds, and others provided by Cabinet Order, all of which can be recognized by human perception, which is: { (i) and (ii) remain the same.} 4 

• Local Application(Article 5(4)(5)) -“Specimen” -“Description of the mark” new -“Audio file” only for sound marks new • International Registration -Sound marks are clear. -Position, movement, hologram, or color marks are identified from the “Description of the mark” by words, such as “moving,” “hologram,” “positioning of the mark,” etc. -An audio file for a sound mark can be submitted before or after a provisional refusal. 5 3. How to File the New Types 

NOTE If a non-traditional mark cannot be identified from “description of the mark” or “audio file,” it becomes grounds for refusal, and also opposition or invalidation. The description of the mark must be carefully written. 6 

Required Clarity in the description of the mark A mark drawn in a Specimen must match components and embodiment of the mark explained in the “description of the mark.” 7 

(1) Sound marks Represented by musical scores or description in a specimen Musical score written with notes, rests, clefs, signatures, tempo, lyrics, and preferably musical instrument, voice type, etc. Description ex: Sound comprised of two hand claps and then cat’s mewing for a total of three seconds 8 

(2) Movement marks Graphically represented by a series of still images Description of the Mark (B) A trademark in the specimen is a movement mark described the state of change of the mark as time passes. It shows that a bird moves from lower left to upper right following the tracks of broken line. This motion lasts 3 seconds in total. Also the dashed arrow in the image represents the track along which the bird moves and is for an explanatory purpose, not part of the mark itself. or 9 A B 

(3) Hologram marks Described by one or more drawings or photos identifying the change of view by light intensity Description of the Mark A trademark in the specimen is a hologram mark, images of which show the appearance from several angles of view. The number assigned at the lower right corner in each image represents the order of the images and is not part of the mark. Image 1 is the view from left side, image 2 is from front, and image 3 is from right side. 10 

(4) Position marks Graphically represented with solid and broken-lines. Description of the Mark A trademark in the specimen is a position mark, which is identified by the position where a mark is affixed. It is composed of a red handle of a kitchen knife. The broken lines of the edge of the kitchen knife merely indicates an example of shape of the goods and is not part of the mark. 11 

(5) Color marks Specimen Description of the Mark (A) A trademark in the specimen is a combination of colors. The combination is red (RGB: R255 G0 B0), blue (RGB: R0 G0 B255), yellow (RGB: R255 G255 B0), and green (RGB: R255 G128 B0). The proportion of each color in the mark is 50% for red, 25% for blue, 15% for yellow, and 10% for green. 12 A B 

4. How to Examine the New Types 

1. Distinctiveness (1) Sound marks ~A series of tones with or without words~ A mark is distinctive if : a word element is distinctive, or : a music element is not commonplace ex: “Bubble sound” for “carbonated drinks” “Bottle open sound” for “sparkling wine” “Beep sound” for “alarm clocks” “Gong sound” for “boxing” 

(2) Position marks A position per se is not an independent identifier, but a supplemental factor of determining distinctiveness. A position mark is distinctive if a mark itself is distinctive. If a word or device is not distinctive, a position mark is generally considered non- distinctive as a whole. 

(3) Movement marks Similarly, a movement per se is not an independent identifier, but a supplemental factor of determining distinctiveness. Distinctiveness is determined based on a moving word or device. If a word or device is not distinctive, a movement mark is generally considered non-distinctive. 

(4) Hologram marks Words or devices presented on a hologram are the elements of distinctiveness. A mark is distinctive if a word or device on a hologram is distinctive. 

(5) Color marks A single color is not distinctive. Neither is a combination of colors. (i). Normally used on a product “Silver” color for “smart phones” (ii). For attention “Pink” color for “cucumbers” (iii). For background or decoration “stripe lines of yellow, green and red” for “cups” 

2. Similarity test (1) Sound marks Factors: music (melody, harmony, rhythm, tempo, etc.) and word (i). Music without word vs. Music without word Compare each salient music part (ii). Music with word vs. music with word Compare music and word respectively (iii). Music with word vs. word mark 

(2) Position marks Again, a position is not an independent identifier. A position mark is compared based on other factors such as sound, appearance, or image. 

(3) Movement marks A movement mark is compared with other marks based on factors other than movement, since movement cannot be a single indicator of origin. 

No content

(4) Hologram marks One phase / other phase One phase / other phase 

(5) Color marks vs. RED (not compared) 

(6) Confusion test Well-known mark vs. normal mark The following are typical examples of confusion. +Movement mark (well-known mark) 

+Color mark (well-known mark) +Position mark (well-known mark) 

For more information or questions, please contact us email: [email protected] Tel: 3-5919-7882 Fax: 3-5919-7883