Japan Business Law: Trademark can be applied for sounds, colors, and even positions
A trademark is a mark to clearly indicate “which brand of product is it?” or “who is providing the service.”
It can be said that it is also an identity of goods and services. After the “Trademark Act” was amended by the Act for Partial Amendment to Patent Act etc. (Law No. 36 of May 14, 2014), from April 1, 2015, things that could not be registered as trademarks before can now be registered.
However, this is not well-known.
Therefore, this article will introduce the trademarks which have become protected subject to the revision.
Movements and sounds are also protected by “Trademarks”
Trademarks include character trademarks, figure trademarks, three-dimensional trademarks, and composite trademarks which combine those trademarks. The five “new types of trademark” below are additionally subject to protection through the revision.
Trademarks in which characters, figures, etc. change over time.
For example, characters and figures that appear on a television or computer screen and move in a certain way are relevant.
Trademarks in which characters and figures, etc. are changed by holography or other methods.
For example, characters and figures that change depending on the viewing angle are relevant.
Trademarks consisting of a single color or a combination of multiple colors.
For example, colors used for product packaging or advertising signs.
Trademarks that consists of music, voice, natural sound, etc. and are recognized by hearing.
For example, sound logos used for commercials, etc., and startup sounds for PCs.
Trademarks that specifies the position where a mark such as a character or figure is attached to a product, such as marking a fixed position on the product.
The procedure for registering a trademark
The trademark registration procedure can be divided into the following four major steps.
(1) Investigate and confirm if the trademark has already been registered by another person or company
If another person or company has already registered the same or similar trademark, even if you apply for the trademark there is a high possibility that your application will be dismissed, and not only that, if you use the trademark without permission, it will result in trademark infringement.
Trademarks can be found on the website of the Patent Office, so please check in advance.
In addition, it is necessary to specify a trademark application by “category” of the product or service.
A category indicates what kind of genre the product or service belongs to.
There is a high possibility that the same or similar trademarks cannot be registered in the same category, and even if they can be registered, they may be invalidated later.
You need to be careful whether the same or similar trademark is not registered in the same category as you are considering the application.
(2) Examine whether the mark you want to register has distinctiveness as a trademark
If the characters and figures cannot be distinguished from other goods or services, the trademark registration will not be permitted as they are not recognized as having distinctiveness.
Since the examination criteria for trademark registration are published, it is necessary to consider whether it is a registrable trademark based on the result of trademark search and examination criteria.
New types of trademarks also have their own criteria.
(3) Prepare documents
Documents required for application can be downloaded from the website of the Japan Patent Office.
Create a document according to the specified format.
If you have any concerns about the provisions or content, please make an inquiry to the patent office or ask specialists such as a patent attorney to make sure there are no deficiencies.
After confirming that the documents are sufficient, now you submit the documents.
Patent revenue stamps are required for application, so please purchase a stamp at the post office or the patent office.
The stamp fee changes depending on the number of application classifications at the time of application.
Basically, it will be “3,400 yen + (8,600 yen ×number of category) = application fee”.
Applications can also be mailed or taken directly to the patent office.
In addition, regarding the “sound trademark”, it is necessary to attach CD-R or DVD-R which contains the sound recorded in MP3 format.
Trademarks help to make an impression of a company’s products and services, therefore registering is useful as a strategy for branding companies and their products and services.
In particular, it can be said that the trademarks added by the revision leave a strong impression on people, but in order to be recognized as a trademark, it is necessary to have some distinguishable points different from existing trademarks.
When considering trademark registration, please proceed through the procedure based on the above points while confirming the matters that need to be considered.
※ The content described in this article are based on the laws, information, etc. as of May 2019.