[Patent attorney explains] When is it not possible to register a trademark? A thorough explanation of the examination standards and reasons for non-registration of new types of trademarks!

As a general rule, among the elements that make up a motion trademark, the motion (changing state) part functions as an independent identification mark for goods and services, and is not extracted as the main part (important part of the trademark). Basically, the judgment will be made regarding similarity or dissimilarity regarding the parts of the mark.

For example, motion marks that are identical or similar and change in the same way, but leave no trace of change, are considered dissimilar as a general rule. Since the marks themselves do not match at all, it is determined that the trademarks as a whole are not similar.

However, there are some exceptional cases. This is a case where the changing state of the mark is displayed as a trajectory on a screen, etc., so that the characters, etc. form a mark that is recognized to have the function of identifying goods or services. In this case, the portion that remains as a trace will also be judged as a mark.

As a general rule, a mark formed by leaving a trace and a motion trademark consisting of the same or similar marks are considered to be similar. In this case, it is determined whether the portions of the motion remaining as trajectories are similar, and if they are similar, the motion trademark as a whole is determined to be similar.

Standards are also provided regarding the similarity between motion trademarks and figurative trademarks and word trademarks.

As a general rule, a motion trademark, in which characters form a mark that is recognized to have a distinguishing function for goods or services by displaying the change state of the mark as a trajectory, and a word trademark, etc., which consists of a mark that is the same as or similar to the mark formed by the trajectory, are considered to be similar. If a motion trademark moves and changes its state as a trajectory, that part is considered to be part of the trademark, and if there is a word mark, etc. that is similar to it, the motion trademark as a whole is judged to be similar to that word mark, etc.

As a general rule, a motion trademark in which a mark that distinguishes goods or services changes using characters or figures, etc., and a figure trademark that consists only of a mark that is the same or similar to that mark are considered to be similar. This is the case if the mark being moved is itself distinctive. In this case, the mark is first judged to be similar and dissimilar, and if there is a graphic trademark, etc. that is identical or similar to it, it is determined that the motion mark as a whole is similar to that graphic trademark, etc.

Also, if the changing state (movement) of such a distinctive mark is extracted as a mark, and there is a motion mark that is the same or similar to it, the standard is that the mark as a whole is similar.

In this way, the points to be considered when determining the similarity of motion trademarks differ depending on whether the mark itself has distinctiveness or not, and whether the movement remains as a trajectory.

Reason for non-registration of motion trademark

As for the reasons for non-registration specific to motion trademarks, similar to other new types of trademarks (color only, sound), general reasons for non-registration such as trademarks consisting only of marks that indicate the characteristics of goods, etc. in a commonly used manner (Article 4, Paragraph 1, Item 18), and trademarks consisting only of shapes essential for ensuring the functions of goods, etc., may also apply. For example, an animation that shows the operation of a product in a product instruction manual may be judged as indicating the product's function. This point requires judgment on a case-by-case basis.

On the other hand, if marks such as symbols and letters with no particular meaning are displayed on multiple display surfaces, and the proportion of the mark on each display surface to the entire trademark is low, and it is unnatural to observe the marks on multiple display surfaces together (for example, depending on the viewing angle, "H", "B", " In such cases, trademarks that are the same or similar to the marks displayed on each display surface (word marks, figure marks, etc.) are, in principle, considered to be similar. This is based on the idea that since unrelated characters are displayed separately, similarity judgments are made for each display screen. Therefore, if there is a word mark that is similar or identical to "H", "B", or "G", the entire hologram mark will be judged to be similar.

Reason for non-registration of hologram trademark

As for the grounds for non-registration specific to hologram trademarks, if the visual effect of the hologram is essential to ensure the functionality of the product, it may fall under the grounds for non-registration (Article 4, Paragraph 1, Item 18, etc.) like other new types of trademarks.

Examination standards for trademarks consisting only of colors and reasons for non-registration

Trademarks consisting only of colors are trademarks that consist only of a single color or a combination of multiple colors, and the color itself functions as an identification mark for goods or services. For example, this includes the color of convenience store signs and the color of product packaging.

Judgment of similarity of trademarks based only on color

When determining the similarity of trademarks based solely on color, it is said that the trademark as a whole must be considered by integrating the hue (type of color), saturation (vividness), and lightness (brightness) of the color in question. In the case of a trademark consisting only of color, the color itself is an award, so it is necessary to observe the color in more detail than in a traditional trademark. In particular, the three elements of hue, saturation, and brightness are said to be important for observation.

In the case of a trademark that combines multiple colors, in addition to the above factors, the overall appearance made up of the combination of colors should be comprehensively considered. This idea is based on the conventional criteria for determining similarity of combined trademarks.

Standards are also provided regarding similarities between trademarks consisting only of colors and other types of trademarks.

First, there is the similarity between trademarks consisting only of a single color and trademarks consisting only of other single colors. A trademark consisting only of a single color is generally considered to be dissimilar, even if there is an identical single-color trademark, since the single color itself is observed as a whole trademark. This is thought to be because the color itself is difficult to distinguish when using only a single color.

Next is the similarity between a trademark consisting only of a single color and a trademark that combines text and color. A trademark consisting only of a single color can be used in multiple ways, so as a general rule, it is not similar to a trademark that combines text and color. In the case of a combination trademark, the text is often the main part, so it is considered to be different from a color-only trademark.

Furthermore, there is a question about the similarities between trademarks consisting only of a single color and word marks, etc.. When determining similarity with word trademarks, even if the appearance, pronunciation, or idea are the same or similar, trademarks consisting only of color are generally considered to be dissimilar, as the appearance of the color is the main determining factor. For example, a picture of a red apple (a graphic trademark) and a trademark consisting only of the color red may be said to be similar in concept as ``red apple,'' but in the case of a trademark consisting only of a color, the appearance of the color is particularly important, so such trademarks are determined to be dissimilar.

On the other hand, the judgment of similarity of combination marks of shapes and colors is also mentioned. If there is a registered trademark that combines a figure and color, and the trademark in question is a combination of a similar figure and color, if the arrangement and proportions of the colors are the same or similar, then in principle they are considered similar. This is different from the similarity judgment for trademarks, which is based only on color, and is based on figurative trademarks. For example, if there is a combination trademark of a figure and color that combines yellow and blue in a specific arrangement, and the trademark in question also has a similar combination, it will, in principle, be judged to be similar.

However, in the case where the trademark in question is a trademark consisting only of colors in contrast to a registered trademark that combines a figure and color, the manner in which the color combination trademark is used does not necessarily match the manner in which the figure trademark is used, so whether or not they are similar must be determined on a case-by-case basis.

Reason for non-registration of trademark consisting only of colors

For trademarks consisting only of colors, standards have also been established for Article 4, Paragraph 1, Item 1 (National flag, etc.) and Item 18 (Indication of characteristics of products, ensuring functionality) of the Trademark Act.

First, let's talk about Article 4, Paragraph 1, Item 1. Among trademarks consisting only of colors, if a trademark consisting only of a single color is a well-known mark that is the same as or similar to the colors of the national flag (including those of foreign countries), in principle it falls under the same category. As trademarks consisting only of colors have become eligible for protection, standards regarding the colors of the national flag have been added.

Next, let's talk about Article 4, Paragraph 1, Item 18. This article states that trademarks that consist only of characteristics naturally possessed by goods, etc. cannot be registered. The following points are listed as criteria for determining whether a trademark consisting only of color falls under this provision.

• The trademark consisting only of the color concerned must consist only of colors that naturally occur from the product, etc.
• The trademark consisting only of the relevant colors must consist only of colors essential for ensuring the functionality of the product, etc.

Therefore, as a general rule, trademark registration is not allowed for colors that naturally occur in the product itself, or colors that are essential for the function of the product or package (for example, red to indicate high temperature, blue to indicate something that requires cooling, etc.).

Examination standards for sound trademarks and reasons for non-registration

Sound trademarks apply to melodies, commercial songs with slogans, sound effects, etc., and are trademarks in which the sound itself functions as an identification mark for goods and services.

Judgment of similarity of sound trademarks

When determining the similarity of sound trademarks, it is said that the trademark as a whole must be considered by integrating the sound elements (musical elements) and linguistic elements (lyrics, etc.) that make up the trademark, as well as the situation in which it is actually applied. Since a sound trademark may consist of two elements, a sound element and a linguistic element, the idea is to observe the whole as a combined trademark.

When determining similarity for sound trademarks that consist only of musical elements, parts that do not have the function of identifying goods or services (for example, mere background sounds) are not extracted as essential parts and are not used for comparison in determining similarity. This means that only parts that have discernible power (such as melodies) are extracted as important parts.

When determining the similarity of sound trademarks by extracting the main parts that have identification functions, it is said that at least the melodies must be the same or similar. There are various elements of sound, such as melody, rhythm, harmony, timbre, and tempo, but the most important thing is melody, so the minimum requirement is melodic identity or similarity.

Judging the similarity of sound trademarks that include linguistic elements depends on whether the sound elements and linguistic elements are distinctive.

For example, if only the sound element is recognized as having the ability to identify goods and services, the similarity judgment will be made for the sound element. On the other hand, if only the linguistic element is recognized as having a discriminating function, the similarity judgment is made for the linguistic element.

If both the sound element and the linguistic element are recognized to have a discriminating function, we will make a similarity judgment by considering the strengths and weaknesses of each element in discriminating the goods/services. Specifically, for example, if a musical element is not famous and has a weak identification function, and a linguistic element is famous and has a strong identification function, only the linguistic element may be extracted as the main part.

When a linguistic element is extracted as a main part in this way, a judgment is made as to whether or not the characters that make up the linguistic element are similar to the word trademark. For example, if the linguistic element of a sound trademark is "JTO" and the word mark is "JTO", the two will be judged to be similar.

Reason for non-registration of sound trademark

For sound trademarks, standards related to Article 4, Paragraph 1, Item 9 (Violation of public order and morals) and Item 18 (Indication of product characteristics, ensuring functionality) of the Trademark Act have been added.

This is about Article 4, Paragraph 1, Item 9 (violation of public order and morals). For example, a sound trademark may be considered a violation of public order and morals in the following cases:

• If the sound itself is reminiscent of the national anthem of a nation or foreign country.
• If the sound mark is a specific sound, such as a well-known emergency vehicle siren.

As a general rule, certain public and well-known sounds, such as the national anthem and emergency vehicle sirens, cannot be registered as trademarks.

Article 4, Paragraph 1, Item 18 applies in the same way as a trademark consisting only of colors. Sounds that are naturally generated by products, etc., and sounds that are essential for ensuring the functionality of products, etc. are considered to be grounds for non-registration. For example, sounds that are essential to the product's functionality, such as the startup sound of electronic devices or the sound of a car's engine, cannot be registered as a general rule.

Examination standards for location trademarks and reasons for non-registration

Position trademark is a trademark consisting of a combination of a mark such as letters or figures and a specific position in the place where the goods or services bearing the mark are provided. For example, a tag attached to a specific location on a bag or a label sewn in a specific location on clothing.

Judgment of similarity of position trademarks

When determining the similarity of position trademarks, it is said that the marks such as letters and figures and the position where the marks are attached must be considered as a whole, taking into account the marks as a whole. Like motion trademarks and hologram trademarks, position trademarks are based on the premise that they will be used in a specific manner, and the idea is that the mark part and its position in a specific manner are observed as a whole.

However, as a general rule, the position itself (the place where the mark is affixed) functions as an independent identification mark for goods and services, and is not extracted as the main part. Basically, it is necessary to judge whether or not the marks are similar.

The method of judgment regarding this principle differs depending on whether the mark has distinctiveness or not.

When the mark lacks distinctiveness In cases where a mark affixed to a product, etc. does not have an identifying function in relation to the product (for example, a mark that is considered to be a mere decoration or pattern), judgments on similarity must be made holistically, taking into account the impressions, memories, associations, etc. given to consumers and traders by the position of the affix on the product, etc.

For example, for a stuffed animal (product), there is an example of a position trademark where a red tag is attached to the animal's ears. If this red tag itself has no distinguishing power, similarity is determined by observing the red tag as a whole and its location on the stuffed animal's ear. Therefore, if a rabbit's ears have a red tag, a bear's ears have a red tag with a slightly different shape, and an elephant's ears have a red tag with a slightly different shape in the shape of an apple, these trademarks will be determined to be similar because they give a similar overall impression.

Also, regarding the similarity between a location trademark and a figure trademark, etc., if the mark lacks distinctiveness, the elements that make up the location trademark will not be extracted as essential parts, so similar to the above, the mark and location should be observed as a whole to determine similarity.

Next, If the mark has distinctiveness.

First, let's talk about similarity between position trademarks. If the marks are the same or similar, the marks are generally considered to be similar as a whole, even if the positions of the marks are different. This is because the distinctive parts of the mark are considered important parts. For example, if the letters "JPO" are attached to a specific location on a table tennis racket, the letters "JPO" have distinctiveness, so even if the locations on the racket are different, the trademarks as a whole will be considered similar.

Next, let's talk about the similarities between location trademarks and figure trademarks, etc.. When a mark constituting a position trademark is extracted as a main part, the mark is, in principle, similar to the same or similar figure mark, etc. as a whole. For example, if the letters "JPO" are attached as a position trademark in a specific location (for example, at the bottom right of the package), the letters "JPO" will be displayed as the main part. Therefore, if there is a word mark "JPO" that is similar to this, the position mark as a whole will be judged to be similar to that word mark.

In this way, when determining the similarity of location marks, the important point is whether the mark itself has distinctiveness. If a distinctive mark is attached, there is a high possibility that the marks will be judged to be similar even if the positions are different.

Reason for non-registration of position trademark

As with other new types of trademarks, the grounds for non-registration specific to position trademarks may fall under Article 4, Paragraph 1, Item 18 if a mark that indicates the characteristics of a product, etc. in a commonly used manner is affixed only in a position that is commonly used on the product, etc.. For example, a tag indicating clothing size may be placed in the position where a size tag would normally be placed. This may also apply if the location itself is essential to ensuring the functionality of the product.

Advice from a patent attorney: If in doubt, consult an expert

So far, we have looked at the examination criteria for determining similarity and grounds for non-registration of new types of trademarks (motion, hologram, color only, sound, position).

As you can see, the examination standards for new types of trademarks require more factors to be considered compared to traditional text and figure trademarks, and judgments can be complicated in some cases. In particular, determining whether your trademark is similar to other registered trademarks and whether it falls under the grounds for non-registration requires specialized knowledge and experience.

"Can this trademark be registered?" "I'm worried about which grounds for non-registration my trademark will fall under..."

If you feel this way, please consult a patent attorney who is a trademark expert.

A patent attorney can accurately determine the possibility of registering your trademark based on the latest examination standards and past trial decisions. We can also provide advice on how to avoid the risks of non-registration, suggestions on how to make your trademark more likely to be registered, and suggestions on application strategies.

Even if you spend a lot of time and money applying, there is no point in applying if the registration is not approved. By consulting with a patent attorney before filing, you can avoid unnecessary procedures and aim for smooth acquisition of trademark rights.

At our office, we provide consultation on applications for various trademarks, including new types of trademarks. Please feel free to contact us first.

Summary

In this article, we have explained the basic concept of "grounds for non-registration" that disallow trademark registration, as well as the examination standards for determining similarity and grounds for non-registration, especially for new types of trademarks (motion trademarks, hologram marks, trademarks consisting only of color, sound marks, position marks).

New types of trademarks can be powerful tools for companies to express their brand images in a variety of ways, but there are unique standards for their registration. Checking whether your trademark meets these standards and whether it falls under any of the reasons for non-registration is the first step towards smooth trademark registration.

Trademarks are important assets for your business. To ensure proper protection, please utilize the power of an expert patent attorney.

For consultations with our office, please feel free to use the contact information below.

 

AUTHOR

Takefumi SUGIURA （杉浦 健文）

EVORIX Intellectual Property Law Firm　Managing Patent Attorney

Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).

→ Patent Attorney Profile → Contact Us → Consultation Flow