© Tsukuni & Associates 2015 1/6

No. 1 / March 2015

Newsletter / IP Japan

Outline of Non-traditional Trademark Application in Japan The revised Japanese Trademark Act to take effect in April

Japan Industrial Property Law was revised in 2014. It is scheduled to come into force from April 1, 2015. This is one of the largest revisions for the Japanese Trademark Act for the first time in years. The current Japanese Trademark Act stipulates that a protectable trademark should be “any character, figure, sign or three-dimensional shape, or any combination thereof, or any combination thereof with colors” (Article 2). That is, only flat and three-dimensional marks (Traditional trademarks), which are visible, have been protected. The new act will revise the definition of “Trademark”: It will accept “Color”, “Position”, “Sounds”, “Holograms” and “Movement” (Non-traditional trademarks) as registrable trademarks. According to the transitional measure of the revised act, even after someone obtains the non-traditional marks which conflict with a person’s marks having been used since before April 1, 2015, the person has right to use his/her marks under the following conditions;

-The person has continuously used the mark before the date of enforcement. -The trademarks are not used for unfair purposes. -Using the mark within the geographical range that the person uses the mark at the time of enforcement.

- When the mark is well known among consumers at the time of enforcement, person is able to use the mark outside of the said geographical range.

In the face of the revised act taking effect, we would like to survey the requirements for fling the application for these non-traditional trademarks. Since the Japan Patent Office released the examination guideline for the revised act, we introduce the outline for you. 1. Color marks (1) What is color mark? “Color mark” in this context is the mark which consists of color(s) only. The revised trademark act aims to protect color without outlines as a trademark. (2) Detailed description of the mark The applicant has to claim that the mark is color and refer to detailed description of the mark. “Detailed description of the mark” is a unique particular in the applications for non-traditional trademarks. Since samples of trademarks may not be enough to determine the trademarks, the revised act requires applicants to explain details of the non-traditional marks.

ex. 1)【Trademark applied for registration

【Trade【Detailed description of the mark The tcolor (RGB A combinationex. 2)【Trademark applied for registration

【Tr【Detailed description of the mark The Trademark applied for registration combinationBlue Greenpercent of Red, 25 percent of Blue, 15 percent of Yellow and 10 percent of Green from the top. The guideline shows the example that the colors are defined by RGB Color Chart. The way to define the color does not seem to be lapplicant should identify the color with numbers of color charts or systems which are commonly used in the market. If the color ma

ex. 1) Trademark applied for registration

Trademark which Detailed description of the mark

The trademark applied for regicolor (RGB color code :R255, G0, B0)

combination of colors is ex. 2)

Trademark applied for registration

Trademark which Detailed description of the mark

The Trademark applied for registration combination of colors. The color combination is red (RGB color codeBlue (RGB color code :RGreen (RGB color codepercent of Red, 25 percent of Blue, 15 percent of Yellow and 10 percent of Green from the top.

The guideline shows the example that the colors are defined by RGB Color Chart. The way to define the color does not seem to be lapplicant should identify the color with numbers of color charts or systems which are commonly used in the market.

the color markcolor mark by identifying that the color is settled in a certain positon of the item.

Trademark applied for registration

mark which consist

Detailed description of the markrademark applied for regi

color code :R255, G0, B0)

of colors is

Trademark applied for registration

ademark which consist

Detailed description of the markThe Trademark applied for registration

of colors. The color combination is red (RGB color code(RGB color code :R0, G0, B(RGB color code :R255, G128

percent of Red, 25 percent of Blue, 15 percent of Yellow and 10 percent of Green from

The guideline shows the example that the colors are defined by RGB Color Chart. The way to define the color does not seem to be lapplicant should identify the color with numbers of color charts or systems which are commonly used in the market.

mark is characterizedrk by identifying that the color is settled in a certain positon of the item.

Trademark applied for registration】

consists of color onlyDetailed description of the mark】

rademark applied for registration consists of color only. Icolor code :R255, G0, B0)

of colors is registrable

Trademark applied for registration】

consists of color onlyDetailed description of the mark】

The Trademark applied for registration of colors. The color combination is red (RGB color code

0, G0, B255):R255, G128, B0)

percent of Red, 25 percent of Blue, 15 percent of Yellow and 10 percent of Green from

The guideline shows the example that the colors are defined by RGB Color Chart. The way to define the color does not seem to be lapplicant should identify the color with numbers of color charts or systems which are commonly used in the market.

characterized in the position of the item, the applicant specifies the rk by identifying that the color is settled in a certain positon of the item.

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】

of color only】

stration consists of color only. Icolor code :R255, G0, B0)

as a trademark.

】

of color only】

The Trademark applied for registration (Herein after of colors. The color combination is red (RGB color code

255), Yellow (RGB color code :R, B0). The balance

percent of Red, 25 percent of Blue, 15 percent of Yellow and 10 percent of Green from

The guideline shows the example that the colors are defined by RGB Color Chart. The way to define the color does not seem to be limited by RGB Color Chart. However, the applicant should identify the color with numbers of color charts or systems which are

in the position of the item, the applicant specifies the rk by identifying that the color is settled in a certain positon of the item.

stration consists of color only. I

as a trademark.

(Herein after “The trademarkof colors. The color combination is red (RGB color code

(RGB color code :R. The balance of colors is as follows: 50

percent of Red, 25 percent of Blue, 15 percent of Yellow and 10 percent of Green from

The guideline shows the example that the colors are defined by RGB Color Chart. The imited by RGB Color Chart. However, the

applicant should identify the color with numbers of color charts or systems which are

in the position of the item, the applicant specifies the rk by identifying that the color is settled in a certain positon of the item.

© Tsukuni & Associates 201

stration consists of color only. It consists of

The trademark” ) of colors. The color combination is red (RGB color code:R255, G0, B0)

(RGB color code :R0, G255, B0)of colors is as follows: 50

percent of Red, 25 percent of Blue, 15 percent of Yellow and 10 percent of Green from

The guideline shows the example that the colors are defined by RGB Color Chart. The imited by RGB Color Chart. However, the

applicant should identify the color with numbers of color charts or systems which are

in the position of the item, the applicant specifies the rk by identifying that the color is settled in a certain positon of the item.

© Tsukuni & Associates 201

t consists of the red

) consists of :R255, G0, B0)

, G255, B0) and of colors is as follows: 50

percent of Red, 25 percent of Blue, 15 percent of Yellow and 10 percent of Green from

The guideline shows the example that the colors are defined by RGB Color Chart. The imited by RGB Color Chart. However, the

applicant should identify the color with numbers of color charts or systems which are

in the position of the item, the applicant specifies the rk by identifying that the color is settled in a certain positon of the item.

© Tsukuni & Associates 2015

red

of :R255, G0, B0),

and

percent of Red, 25 percent of Blue, 15 percent of Yellow and 10 percent of Green from

The guideline shows the example that the colors are defined by RGB Color Chart. The imited by RGB Color Chart. However, the

applicant should identify the color with numbers of color charts or systems which are

in the position of the item, the applicant specifies the

The applicant needs to explain an example of the figure of the 2. Position(1) What is position mark?Position mark is letters, graphics and/or their the item

(2) Detailed description of the markThe applicant needs to explain what the specimen shows. Since the designs and figures of the commodities are usually not the same, the applicant shows the outline of the goods with dashed lines in order not to fix the outline. Meanwhile, the part which is depicted ex. 3)【Trademark applied for registration

【Trademark which【Detailed description of the markThis trademark is a position mark which consists of a figure of the example 【Class, goods and services【Class 28【Goods (Services)

ex. 3) Class 8

The applicant needs to explain an example of the figure of the

Position mark(1) What is position mark?Position mark is letters, graphics and/or their the item is specified.

ex. 1) Class 8

(2) Detailed description of the markThe applicant needs to explain what the specimen shows. Since the designs and figures of the commodities are usually not the same, the applicant shows the outline of the goods with dashed lines in order not to fix the outline. Meanwhile, the part which is depicted with lines shows the rough position of the mark on the goods.

ex. 3) Trademark applied for registration

Trademark whichDetailed description of the mark

This trademark is a position mark which consists of a figure of the “Bags for golf clubsexample of the item. Th

Class, goods and servicesClass 28】 Goods (Services)

ex. 3) Class 8 “Knives

The applicant needs to explain an example of the figure of the

marks (1) What is position mark? Position mark is letters, graphics and/or their

is specified. ex. 1) Class 8 “Knives

(2) Detailed description of the markThe applicant needs to explain what the specimen shows. Since the designs and figures of the commodities are usually not the same, the applicant shows the outline of the goods with dashed lines in order not to fix the outline. Meanwhile, the part which is

with lines shows the rough position of the mark on the goods.

Trademark applied for registration

Trademark which consistDetailed description of the mark

This trademark is a position mark which consists of a figure Bags for golf clubs”

of the item. This part does not Class, goods and services

Goods (Services)】 Bags for golf clubs

Knives”

The applicant needs to explain “The part which is an example of the figure of the commodity

Position mark is letters, graphics and/or their

Knives”

(2) Detailed description of the mark The applicant needs to explain what the specimen shows. Since the designs and figures of the commodities are usually not the same, the applicant shows the outline of the goods with dashed lines in order not to fix the outline. Meanwhile, the part which is

with lines shows the rough position of the mark on the goods.

Trademark applied for registration】

consists of color only

Detailed description of the mark】 This trademark is a position mark which consists of a figure

” . The part which is depicted with dash lines is only an part does not

Class, goods and services】

Bags for golf clubs

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ex. 4) Class 28

The part which is commodity. The part does not consist of trademark

Position mark is letters, graphics and/or their combination

ex. 2) Class 28

The applicant needs to explain what the specimen shows. Since the designs and figures of the commodities are usually not the same, the applicant shows the outline of the goods with dashed lines in order not to fix the outline. Meanwhile, the part which is

with lines shows the rough position of the mark on the goods.

】

of color only】

This trademark is a position mark which consists of a figure The part which is depicted with dash lines is only an

part does not compose the

Bags for golf clubs

ex. 4) Class 28

The part which is depicted with dash lines only shows . The part does not consist of trademark

combination, which position attached on

ex. 2) Class 28

The applicant needs to explain what the specimen shows. Since the designs and figures of the commodities are usually not the same, the applicant shows the outline of the goods with dashed lines in order not to fix the outline. Meanwhile, the part which is

with lines shows the rough position of the mark on the goods.

This trademark is a position mark which consists of a figure attached on the lower side The part which is depicted with dash lines is only an

compose the trademark”.

© Tsukuni & Associates 201

ex. 4) Class 28 “Bags for golf clubs

with dash lines only shows . The part does not consist of trademark

, which position attached on

ex. 2) Class 28 “Bags for golf clubs

The applicant needs to explain what the specimen shows. Since the designs and figures of the commodities are usually not the same, the applicant shows the outline of the goods with dashed lines in order not to fix the outline. Meanwhile, the part which is

with lines shows the rough position of the mark on the goods.

attached on the lower side The part which is depicted with dash lines is only an

trademark”.

© Tsukuni & Associates 201

Bags for golf clubs

with dash lines only shows

. The part does not consist of trademark”

, which position attached on

Bags for golf clubs

The applicant needs to explain what the specimen shows. Since the designs and figures of the commodities are usually not the same, the applicant shows the outline of the goods with dashed lines in order not to fix the outline. Meanwhile, the part which is

attached on the lower side The part which is depicted with dash lines is only an

© Tsukuni & Associates 2015

Bags for golf clubs”

with dash lines only shows ” .

, which position attached on

Bags for golf clubs”

The applicant needs to explain what the specimen shows. Since the designs and figures of the commodities are usually not the same, the applicant shows the outline of the goods with dashed lines in order not to fix the outline. Meanwhile, the part which is

attached on the lower side

3. SoundThe present trademark act defines the trademark must be visible. Thus, it has been impossible to protect sounds by the Japan Trademark Act. The revised act aims to protect not only linguistic elements of the sound but also sounds without linguelements. (1) How to specify sound marks?The applicant must specify the sound with (1) staff notations including treble clefechoic words and mimetic wor ex. 1) Staff notations

The applicant can specify the sound marks with echoic words ex. 2) clapping hands Therefore, the sound which is specified with sonograms, tand so on, would not be The specimens below would not be accepted.

Sound marks The present trademark act defines the trademark must be visible. Thus, it has been impossible to protect sounds by the Japan Trademark Act. The revised act aims to protect not only linguistic elements of the sound but also sounds without linguelements.

(1) How to specify sound marks?The applicant must specify the sound with (1) staff notations including treble clef, bass clefechoic words and mimetic wor

ex. 1) Staff notations

The applicant can specify the sound marks with echoic words ex. 2) The sound of clapping hands:

The soundThe moaning sound of winds:“This trademark is three seconds long: after the sound

clapping hands arises

Therefore, the sound which is specified with sonograms, tand so on, would not be

The specimens below would not be accepted.

The present trademark act defines the trademark must be visible. Thus, it has been impossible to protect sounds by the Japan Trademark Act. The revised act aims to protect not only linguistic elements of the sound but also sounds without lingu

(1) How to specify sound marks?The applicant must specify the sound with (1) staff notations including

bass clef or alto clefechoic words and mimetic wor

ex. 1) Staff notations

The applicant can specify the sound marks with echoic words The sound of clapping hands:

The sound of cat mewing:The moaning sound of winds:This trademark is three seconds long: after the sound

arises, “meow

Therefore, the sound which is specified with sonograms, tand so on, would not be accepted

The specimens below would not be accepted.Sonograms

The present trademark act defines the trademark must be visible. Thus, it has been impossible to protect sounds by the Japan Trademark Act. The revised act aims to protect not only linguistic elements of the sound but also sounds without lingu

(1) How to specify sound marks? The applicant must specify the sound with (1) staff notations including

or alto clef, tempo, signature and linguistic element (if any)echoic words and mimetic words and their combination.

The applicant can specify the sound marks with echoic words The sound of clapping hands:

of cat mewing: “MeowThe moaning sound of winds: “This trademark is three seconds long: after the sound

meow” sound of cat comes.

Therefore, the sound which is specified with sonograms, taccepted as trademark.

The specimens below would not be accepted.Sonograms

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The present trademark act defines the trademark must be visible. Thus, it has been impossible to protect sounds by the Japan Trademark Act. The revised act aims to protect not only linguistic elements of the sound but also sounds without lingu

The applicant must specify the sound with (1) staff notations including , tempo, signature and linguistic element (if any)ds and their combination.

The applicant can use a single notation only if they are shown in full scores.

The applicant can specify the sound marks with echoic words The sound of clapping hands: “Pam

Meow” “Gou-gou”

This trademark is three seconds long: after the sound sound of cat comes.

Therefore, the sound which is specified with sonograms, tas trademark.

The specimens below would not be accepted.

The present trademark act defines the trademark must be visible. Thus, it has been impossible to protect sounds by the Japan Trademark Act. The revised act aims to protect not only linguistic elements of the sound but also sounds without lingu

The applicant must specify the sound with (1) staff notations including , tempo, signature and linguistic element (if any)ds and their combination.

The applicant can use a single notation only if they are shown in full scores.

The applicant can specify the sound marks with echoic words Pam-pam”

This trademark is three seconds long: after the sound

sound of cat comes.

Therefore, the sound which is specified with sonograms, tablature

© Tsukuni & Associates 201

The present trademark act defines the trademark must be visible. Thus, it has been impossible to protect sounds by the Japan Trademark Act. The revised act aims to protect not only linguistic elements of the sound but also sounds without lingu

The applicant must specify the sound with (1) staff notations including musical notes, , tempo, signature and linguistic element (if any)

The applicant can use a single notation only if they are shown in full scores.

The applicant can specify the sound marks with echoic words

This trademark is three seconds long: after the sound “pam-pam

ablature, title of the songs,

Tablature

© Tsukuni & Associates 201

The present trademark act defines the trademark must be visible. Thus, it has been impossible to protect sounds by the Japan Trademark Act. The revised act aims to protect not only linguistic elements of the sound but also sounds without linguistic

musical notes, , tempo, signature and linguistic element (if any), (2)

The applicant can use a single notation only if they are shown in full scores.

pam” from

, title of the songs,

© Tsukuni & Associates 2015

istic

musical notes, , (2)

The applicant can use a single notation

, title of the songs,

(2) Detailed description of the markThe applicant can file the recorded in CD 4. MovThe applicant example, as you see at the arrowed line. (This specimen shows that the bird figure would move without changing.) ex.1)【Trademark applied for registration

【Movement trademark【Detailed description of the markThe tradefrom bottom left to right topcompose The applicants can ex.2)【Trademark applied for registration

【Movement trade【Detailed description of the markThe trademarkmoving bird flappingsecond long. The numbers shown at the bottom of the right corner just show the order of frames. They do not compose the elements of the trademark.

) Detailed description of the markThe applicant can file the recorded in CD-

Movement markThe applicant haexample, as you see at the arrowed line. (This specimen shows that the bird figure would move without changing.)

ex.1) Trademark applied for registration

Movement trademarkDetailed description of the mark

trademark is movement trademark. It shows a bird moves following the from bottom left to right topcompose the trademark. It just shows trajectory of the moving bird.

The applicants can ex.2)

Trademark applied for registration

Movement tradeDetailed description of the mark

trademark is movement trademark. The five frames from No.1 to No.5 show a moving bird flappingsecond long. The numbers shown at the bottom of the right corner just show the order of frames. They do not compose the elements of the trademark.

) Detailed description of the markThe applicant can file the sound

-ROM or DVD

marks has to describe the movement of the mark with the passage of time. For

example, as you see at the example 1, the applicant shows the movement with a dashed arrowed line. (This specimen shows that the bird figure would move without changing.)

Trademark applied for registration

Movement trademark】 Detailed description of the mark

is movement trademark. It shows a bird moves following the from bottom left to right top

the trademark. It just shows trajectory of the moving bird.

The applicants can submit several pictures showing frames of the movement.

Trademark applied for registration

Movement trademark】 Detailed description of the mark

is movement trademark. The five frames from No.1 to No.5 show a moving bird flapping its wings from bottom left to right top. This movement is 3 second long. The numbers shown at the bottom of the right corner just show the order of frames. They do not compose the elements of the trademark.

) Detailed description of the mark sound mark in the form of sound data MP3. It should be

ROM or DVD-ROM and submitted to the Japan Patent Office.

s to describe the movement of the mark with the passage of time. For example 1, the applicant shows the movement with a dashed

arrowed line. (This specimen shows that the bird figure would move without changing.)

Trademark applied for registration】

Detailed description of the mark】

is movement trademark. It shows a bird moves following the from bottom left to right top. This movement is 3 second

the trademark. It just shows trajectory of the moving bird.

submit several pictures showing frames of the movement.

Trademark applied for registration】

Detailed description of the mark】

is movement trademark. The five frames from No.1 to No.5 show a its wings from bottom left to right top. This movement is 3

second long. The numbers shown at the bottom of the right corner just show the order of frames. They do not compose the elements of the trademark.

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mark in the form of sound data MP3. It should be ROM and submitted to the Japan Patent Office.

s to describe the movement of the mark with the passage of time. For example 1, the applicant shows the movement with a dashed

arrowed line. (This specimen shows that the bird figure would move without changing.)

】

is movement trademark. It shows a bird moves following the

. This movement is 3 secondthe trademark. It just shows trajectory of the moving bird.

submit several pictures showing frames of the movement.

】

is movement trademark. The five frames from No.1 to No.5 show a

its wings from bottom left to right top. This movement is 3 second long. The numbers shown at the bottom of the right corner just show the order of frames. They do not compose the elements of the trademark.

mark in the form of sound data MP3. It should be ROM and submitted to the Japan Patent Office.

s to describe the movement of the mark with the passage of time. For example 1, the applicant shows the movement with a dashed

arrowed line. (This specimen shows that the bird figure would move without changing.)

is movement trademark. It shows a bird moves following the . This movement is 3 second long. The

the trademark. It just shows trajectory of the moving bird.

submit several pictures showing frames of the movement.

is movement trademark. The five frames from No.1 to No.5 show a its wings from bottom left to right top. This movement is 3

second long. The numbers shown at the bottom of the right corner just show the order of frames. They do not compose the elements of the trademark.

© Tsukuni & Associates 201

mark in the form of sound data MP3. It should be ROM and submitted to the Japan Patent Office.

s to describe the movement of the mark with the passage of time. For example 1, the applicant shows the movement with a dashed

arrowed line. (This specimen shows that the bird figure would move without changing.)

is movement trademark. It shows a bird moves following the long. The dotted

the trademark. It just shows trajectory of the moving bird.

submit several pictures showing frames of the movement.

is movement trademark. The five frames from No.1 to No.5 show a its wings from bottom left to right top. This movement is 3

second long. The numbers shown at the bottom of the right corner just show the order of frames. They do not compose the elements of the trademark.

© Tsukuni & Associates 201

mark in the form of sound data MP3. It should be ROM and submitted to the Japan Patent Office.

s to describe the movement of the mark with the passage of time. For example 1, the applicant shows the movement with a dashed

arrowed line. (This specimen shows that the bird figure would move without changing.)

is movement trademark. It shows a bird moves following the dotted dotted line does not

submit several pictures showing frames of the movement.

is movement trademark. The five frames from No.1 to No.5 show a its wings from bottom left to right top. This movement is 3

second long. The numbers shown at the bottom of the right corner just show the order

© Tsukuni & Associates 2015

s to describe the movement of the mark with the passage of time. For example 1, the applicant shows the movement with a dashed

arrowed line. (This specimen shows that the bird figure would move without changing.)

line line does not

is movement trademark. The five frames from No.1 to No.5 show a

second long. The numbers shown at the bottom of the right corner just show the order

© Tsukuni & Associates 2015 6/6

5. Hologram marks The applicant is required to submit one or more pictures which specify to-and-fro variation of the mark which changes through holographic effects or other visible effects. 【Trademark applied for registration】

【Hologram trademark】 【Detailed description of the mark】 The trademark is a hologram trademark views which show different visual surfaces according to the angles. The picture No.1 shows the visual surface which is seen from the left. The picture No.2 shows the visual surface which is seen from the front. The picture No.3 shows the visual surface which is seen from the right. The numbers shown at the bottom right corner just show the order of views. They do not compose the elements of the trademark. CONTACT US: [ TOKYO OFFICE ] KOJIMACHI BUSINESS CENTER 2F, 5-3-1, Kojimachi, Chiyoda-ku, Tokyo, 102-0083, JAPAN Telephone: +81 (3) 6261 3750 (main) Facsimile: +81 (3) 3263 5650 [ KANSAI OFFICE ] Shin-Osaka Doi Building 5F, 7-5-25, Nishinakajima, Yodogawa-ku, Osaka, 532-0011 JAPAN Telephone : +81 (6) 4806 1350 Facsimile : +81 (6) 4806 1351 Email: ip-firm@tsukuni.gr.jp Website: http://www.tsukuni.gr.jp/en/ This newsletter should not be interpreted as a legal/technical opinion for a specific case and the contents should not be taken as complete statements. Should you require more advice or information, please contact us without reserve. Your feedback would be always appreciated.