In general, the types of trademarks described below cannot be registered.
- 1. Trademarks that could be confused with famous trademarks or trademarks of others
- 2. Trademarks that could be misleading about the nature of goods or services
- 3. Trademarks that would cause goods or services of another to be indistinguishable from yours
Please note that just because a trademark does not fall into one of these categories does not mean it can be registered.
1. Trademarks that could be confused with famous trademarks or trademarks of others
The following shows examples of trademarks that cannot be registered.
* If a trademark is similar to the registered trademark of another and the designated goods and designated services are also similar.
A trademark cannot be registered if someone else has already been granted a right for this trademark. This is because, in Trademark Law, whoever files first gets precedence. In practice, this is one of the most common reasons for receiving a Notice of Reasons for Rejection, i.e. a notification that the trademark cannot be registered.
However, even if a trademark is similar to the registered trademark of someone else, this trademark can still be registered as long as the goods and services are not similar. For example, the designated goods “hamburgers” and “automobiles” are not similar, and so even if someone already holds a trademark right for the designated good “hamburgers,” it is possible to register the same trademark for the designated good “automobiles.”
* If a trademark is similar to a famous unregistered trademark of another and the designated goods and designated services are similar.
A trademark similar to a famous trademark of another cannot be registered, even if the famous trademark is unregistered. Since a famous trademark has a certain amount of prestige even if it is unregistered, it is necessary to protect that value.
In other words, under Trademark Law, someone who has a famous unregistered trademark cannot stop someone from using the trademark, but can prevent this person from registering the trademark. There are cases in which someone holding a famous unregistered trademark can stop someone else from using that trademark under Unfair Competition Laws, but it is more difficult and requires more evidence than if the trademark right is held.
* If a trademark would cause confusion as to what the goods or services of another’s business are
Even if a trademark is used for goods and services that are not similar to the goods and services of another, it is possible that the trademark cannot be registered. For example, if there is a trademark similar to an incredibly famous trademark of another, even if the goods and services are different, this creates the impression that the producer of the different goods has some kind of financial or organizational relationship with the holder of the famous trademark. In this case, the trademark cannot be registered.
* If a trademark includes a proper name, a famous stage name, or a famous nickname of another (Exception is granted if permission is received from the person whose name is used)
For example, there is a high possibility that the trademark below cannot be registered (assuming the applications are filed by someone other than the person whose name is used). A trademark for “Jackie Chan” or “Will Smith”, which is the stage name of a famous actor, with “movie film production, movie film distribution”.
Even if the applicant’s name is the same as a famous person, it is usually the case that permission from the famous person is required.
2. Trademarks that could cause confusion about the nature of goods or services
For example, an application for the trademark “XX juice” with “wine” as the designated good cannot be registered. If a bottle labeled “XX juice” is among bottles at a store, many people could buy it assuming the contents were juice. Trademarks that could cause confusion about the nature of a product cannot be registered.
As another example, consider an application for the trademark “Okinawa XX” with “handbag” as the designated good. If a handbag has “Okinawa XX” displayed on it, people would assume that the handbag was made in Okinawa, a famous island in Japan. People who like Okinawa or products from Okinawa would be more likely to purchase this handbag. However, the people purchasing these handbags would be upset if they discovered that the bags were in fact made somewhere else. Trademarks that could “cause confusion about the nature of goods or services” cannot be registered, in order to prevent cases such as the above as well. In the above example, if the designated good was amended (changed) from “handbag” to “handbag for which the majority of manufacturing was performed in Okinawa,” a reason for rejection based on the trademark “causing confusion about the nature of the good” would be withdrawn. Here, it is only necessary that a trademark “could” cause confusion, and there do not need to be actual examples of this confusion.
3. Trademarks that would cause goods or services of another to be indistinguishable from yours
If a trademark is not “distinctive,” it cannot be registered. Since a trademark is used to distinguish the goods or services of one person from another, it is necessary that a trademark be “distinctive” in order to make these goods and services distinguishable.
The following are examples of trademarks that cannot be registered. However, if these trademarks are shown in an “extremely specialized form,” then it may be possible for them to be registered, since they are not shown “in a normal way.” An example of this would be if the characters were highly stylized.
A. Trademarks for which the common name of goods or services are displayed in a normal way
The “common name” refers to what the goods or services are usually called in the business world.
For example, the trademark “Apple” for the designated good “apples” would be using the “common name” of the product. In contrast, the trademark “Apple” for the designated good “personal computers” is not using the “common name” of the product.
B. Trademarks that are commonly used for goods or services in Japan
“Trademarks that are commonly used” are “distinctive” at first, but eventually lose the “distinctiveness” as people in the industry begin to commonly use the name for similar goods and services.
C. Trademarks for which the nature or origin of goods or services is displayed in a normal way
The following are examples of such trademarks.
- – A trademark for “France” with “wines” as the designated good(Place of origin of goods)
- – A trademark for “the best” with “oranges” as the designated good(Nature of the goods)
- – A trademark for “Osaka” with “providing electrical power” as the designated service(Location of where the service is provided)
- – A trademark for “surgery” with “medical care” as the designated service(Nature of the service)
Trademarks that display a false origin or nature of goods or services in a normal way also cannot be registered. For example, the trademark “Tokyo” for scissors made in China.
D. Trademarks that include only a common first name or title in Japan displayed in a normal way
A “common name or title” is, in principle, a name or title many variations of which can be found. A “title” also includes trade names. Examples of such trademarks are shown below.
- – Takahashi, Tanaka (Japanese common family names)
- – Suzuki’s Store, New York, Co. (common titles)
Since this applies only to last names, a trademark using a full name can still be registered.
E. Trademarks including only extremely simple and common insignia
Examples of such trademarks are given below.
- – A single Japanese character (hiragana or katakana)
- – One or two Roman characters
- – A straight line or circle
- – A number
- – Common 3-d shapes such as spheres or triangular prisms
F. Trademarks that do not enable customers to distinguish between the goods or services of many businesses
Examples of such trademarks are given below.
- – Repeating patterns
- – Mottos (E.g. a catch phrase such as “we’re #1”)
- – Store names that are commonly used to provide certain services
* For the trademarks described in C, D, and E above, the trademarks can be registered if this results in customers being able to distinguish between the goods or services of many businesses. This is because, although the trademarks of C, D, and E were not originally “distinct,” they have become “distinct” through use.
The phrase “customers being able to distinguish between the goods or services of many businesses” means that customers throughout Japan can recognize goods and services to be of a certain company based on that company’s trademark. Furthermore, registration is granted with the assumption that the trademark is in use, and is therefore limited to “goods or services” that are actually being provided.
RYUKA & PARTNERS has been very successful in prosecuting many attractive trademarks which seems non-registerable at first glance.
- e.g. ペーパーレス経理 (“Paperless Accounting”) Reg. No. 6167421
- e.g. 吸収型カルシウム (“Absorptive Calcium”) Reg. No.6149675
(Introduced here through our clients’ courtesy)
In China, a color-only trademark of our client was also registered. Please consult us especially when it is difficult.