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Nice to meet you. My name is Takefumi Sugiura and I am a patent attorney.
In modern society, the elements that make up a brand are not limited to traditional letters and shapes. Whether it's a memorable sound logo, a striking color on a product's packaging, an animation on a digital device, or a mark placed on a specific part of the product itself, a variety of elements that appeal to the senses are helping to imprint brands in the minds of consumers.
In response to these changes in the times, Japan's trademark system has evolved, and new types of trademarks have become subject to protection, such as ``motion trademarks,'' ``hologram trademarks,'' ``color-only trademarks,'' ``sound commercial trademarks,'' and ``location trademarks.''
These new types of trademarks can be powerful tools to express your business's unique personality and differentiate you from the competition. However, in order to register these as trademarks and legally protect them, there are certain standards that must be met. Particularly important is the concept of "discernment."
This time, we will explain from a patent attorney's perspective how the "distinctive power" of these new types of trademarks is determined, and the "identity" that is important after registration, with reference to the examination standards published by the Japan Patent Office. I would also like to touch on why the support of a patent attorney is essential to protect these important elements of your business.
1. What is a new type of trademark?
Let's take a quick look at what each trademark refers to.
- Motion trademark: A trademark that changes over time, such as the opening logo of a TV commercial or the animated logo that appears when a website loads.
- Hologram trademark: A trademark that changes with the visual effects of holographic technology, such as a mark displayed on a package, etc. that appears differently depending on the viewing angle or sparkles depending on the way the light hits it.
- Trademark consisting only of colors: A single color or a combination of colors itself can be registered as a trademark, such as the tricolor color of 7-Eleven or the blue, white, and black stripes of Tombow Pencil's MONO eraser. This could include the colors used in the entire product package or the exterior of the store.
- Sound Trademark: The sound itself, such as a melody, voice, or sound effect, is registered as a trademark, rather than letters or figures, such as Hisamitsu Pharmaceutical's "Hi-Sa-Mi-tsu" sound logo in the commercial for "Salonpas" or NTT Docomo's ringtone "Call Me."
- Position trademark: A mark attached to a product's package or label, or a specific position on the product itself, is registered as a trademark. For example, this could be a switch or tab placed in a specific position on the back pocket of jeans.
These new types of trademarks are intended to protect brand elements that cannot be captured by traditional trademarks such as letters, figures, and symbols.
2. The key to trademark registration: How is "distinctiveness" determined?
In principle, "distinctiveness" is essential for registration as a trademark. "Distinguishability" refers to the ability of consumers who see a trademark to recognize who (company or individual) provides a particular product or service.
Even for new types of trademarks, this "distinctiveness" is the most important examination point. The Japan Patent Office's examination standards establish specific criteria for determining the distinctiveness of each type of trademark.
(1) Distinguishability of motion marks, hologram marks, and position marks
For all of these trademarks, the distinctiveness of the trademark is determined by looking at the ``mark (letters, figures, etc.)'' and its ``conditions that change over time (motion trademarks),'' ``changes with visual effects (hologram trademarks),'' and ``positional trademarks in a specific position'' as a whole.
However, the most basic object of judgment is the part of the mark (the letters and figures themselves, without movement or position).
- If parts of the mark are distinctive: Even if the mark moves, has a holographic effect, or is placed in a particular position, the movement, effect, or position does not make it less distinctive. If the text or shape itself is unique and can be used to identify its source, elements such as movement and position are more likely to be considered decorative effects.
- If the mark lacks distinctiveness: For example, if the mark uses simple characters and figures (such as common names of goods and common figures, which fall under Article 3, Paragraph 1 of the Trademark Act), even if elements such as movement, hologram effects, and specific positions are added to them, the trademark as a whole will not be recognized as having distinctiveness. Movement trajectories, holograms on different display surfaces, marks in specific positions, etc. are likely to be judged as mere product description or decoration.
For example, if the icon of a smartphone app performs a specific animation when it starts up, if the icon's "shape itself" is unique and distinguishable, there is a high possibility that it will be registered without any problems even if the animation is added. On the other hand, simply adding animation to common shapes that can be found anywhere will make it difficult to register them.
(2) Distinguishability of a trademark consisting only of color
A trademark consisting only of colors has no characters or figures, and its distinctiveness is determined only by the ``colors'' used. It is possible to combine multiple colors, but the combination will be judged as a whole.
What is important here is that for trademarks consisting only of color, ``the ``position'' of the color on the product, etc. is not considered.'' This is based on the idea that if the same color is used in any part of the package, it is considered the same color trademark. Unlike location trademarks, the question is whether ``the color itself'' has distinctiveness, rather than ``the color in a specific position.''
Due to its nature, trademarks consisting only of color are often difficult to recognize as distinctive. In particular, the following colors are generally judged to have no distinguishing power.
- Colors that normally display the "common name" of a product or service: Colors specified by law to be used for specific purposes (e.g., the customary combination of red and white for auspicious events, black and white for funerals)
- Colors that represent the "characteristics" of a product or service: Colors that naturally accompany the product (e.g. the color of soy sauce), colors that are essential for ensuring functionality (e.g. black and white of car tires), colors that are normally used to improve attractiveness (e.g. silver of mobile phones), colors that are not normally used but exist (e.g. red and blue of refrigerators), simple vertical striped patterns of the product or simple yellow/red
- Colors normally used for providing services: Colors normally associated with objects used for providing services
In this way, simple product colors, colors commonly used in the industry, colors often used to enhance the product's appeal, etc. are often judged as not having the power to identify the source by themselves. A trademark consisting only of many colors is considered to fall under Article 3, Paragraph 1, Item 3 or Item 6 of the Marks Act.
As a general rule, a trademark consisting only of a color can be registered only if it has become widely known among consumers through long-term use and can be recognized as a specific product or service by looking at the color (i.e., it has acquired distinctiveness through use).
(3) Distinguishability of sound trademarks
Sound trademarks are examined as a whole trademark, which combines ``sound elements (timbre, rhythm, natural sounds, etc.)'' and ``linguistic elements (lyrics, etc.)'' and determines its distinctiveness.
When determining the distinctiveness of a sound trademark, If either the sound element or the linguistic element is found to have distinctiveness, the trademark as a whole is recognized to have distinctiveness. For example, even if the lyrics are a phrase that can be found anywhere, if the melody is so unique that you can immediately identify it as belonging to that company, it may be registered.
However, like color trademarks, sound trademarks may be difficult to recognize as distinctive. In particular, the following sounds are generally judged to have no discernible power:
- A sound that is simply the reading of a common name or designation:
- Signals, alarms, and other very familiar sounds: (e.g. bell sound, train whistle sound)
- Sounds normally emitted by the product: Sounds naturally generated by the product (e.g. the sound of a fan rotating), sounds normally used to ensure functionality (e.g. the alarm sound of an alarm clock)
- Sounds normally emitted when providing services: Sounds that are naturally occurring in nature (e.g. the sizzle of grilled meat), sounds that are commonly used (e.g. the "kang" of a dismantler)
- Natural sounds: Sounds that exist in the natural world, such as the sound of wind or thunder, or artificial sounds that imitate them (as long as they are not recognized as sources)
- Sounds that draw the attention of the business or make an impression: BGM of commercials, etc. (However, only if it is not widely recognized as a source indication)
- Sounds that merely enhance the attractiveness of a product or service: (Example: the "piyo-piyo" sound you hear every time you put on a child's shoes)
- Sounds emitted by things used to provide services: Sounds of vehicles running, sounds of grinding coffee beans
As in these examples, mere functional sounds of products, general sound effects, natural sounds, etc. are often judged to have no ability to identify the source by themselves. Many sound trademarks are considered to fall under Article 3, Paragraph 1, Item 3 or Item 6 of the Trademark Law.
However, unlike color trademarks, the examples provided in Article 3, Paragraph 1, Item 3 for sound trademarks are not limited enumeration. Therefore, it is possible that sounds not listed here may be recognized as discernible.
However, in many cases, in order for a sound trademark to be registered, it is necessary that it has obtained distinctiveness through long-term use, just as color trademarks do. For example, the sound logo of a commercial that has been used for many years falls under this category.
3. Pitfalls after registration? Judgment of “identity”
Even if you have successfully registered a new type of trademark, do not be complacent. When using a registered trademark, it is important to consider whether the registered trademark and the trademark being used are the same. This determination of "identity" is particularly problematic when it comes to the obligation to use trademarks in order to maintain trademark rights (response to non-use revocation trials), or when alleging infringement of another company's trademark rights.
Here too, there are criteria for judgment unique to new types of trademarks.
(1) Identity of motion trademarks, hologram trademarks, and position trademarks
The identity of these trademarks is determined by whether there is a ``difference in the mark'' or ``difference in changing status or position.''
- Motion trademarks: As a general rule, identity is not recognized if there are differences in the applied and registered marks themselves, or if there are differences in how the marks have changed over time.
- Hologram trademarks: In principle, identity is not recognized if there is a difference in the applied or registered marks themselves, or if there is a difference in the change in the mark due to the visual effect of holography.
- Position trademarks: In principle, if there is a difference in the marks that have been applied for or registered, or if there is a difference in the position of the marks, identity is not recognized as a general rule.
For example, if you significantly change a frame in the middle of the animation of a registered motion trademark, or if you move a recorded position trademark mark to a completely different location on the product and use it, it may not be considered that you are using the registered trademark.
(2) Identity of trademark consisting only of color
The identity of trademarks consisting only of colors is determined by whether the colors used have the same "hue," "saturation," and "lightness."
In addition, in the case of trademarks that combine multiple colors, identity may not be recognized if the "array" or "ratio" of the colors is different. Furthermore, if you apply for a color trademark by specifying a specific ``position,'' but the position differs when you use it, in principle, identity will not be recognized.
If you use a color that is even slightly different from the registered color, or change the order or area ratio of color combinations, even if the colors themselves are the same, you may be at a disadvantage in determining identity.
(3) Identity of sound trademarks
The issue with the identity of sound trademarks is whether businesses recognize them as ``the same sound trademark'' as a whole, even if the ``sound elements'' and ``linguistic elements'' are different.
In order for identity to be recognized, at least the ``melody must be the same'' is required. In addition, even if the melodies are the same, differences in factors such as rhythm, tempo, harmony, and instruments played will be taken into consideration.
For example, if the registered sound trademark is a melody played by a violin, but the sound used is the same melody played by a full orchestra, if the overall impression is significantly different, identity may not be recognized. It's not just that the melody is the same; the ``sound'' and ``atmosphere'' in which the melody is played are also important.
(4) Identity when used in combination with other marks
This is an important criterion common to all new types of trademarks. When a new type of trademark has been registered and is used in combination with other marks such as different characters or figures, there may be an issue as to whether identity can be recognized.
In this case, even if a new type of registered trademark is included in the entire trademark used, identity will be recognized only if only the new type of trademark registered can be recognized as a sign that identifies the source of goods, independent of the entire trademark used.
In other words, if a registered motion trademark is used simply as a small decoration next to another company's name, and consumers cannot identify the company by looking at the motion trademark alone, it may not be recognized as using the registered trademark. The new type of trademark that has been registered must itself have independent distinctiveness, and must function as the primary source of the trademark in use.
4. Why do we need a patent attorney to protect a complex “new type of trademark”?
As we have seen so far, new types of trademarks have unique examination standards and precautions for use that are different from traditional trademarks such as letters and figures. In particular, it is often difficult for trademarks or sound trademarks that consist only of color to have distinctiveness on their own, and there are many cases where the key to registration is the acquisition of "distinctiveness through use."
In order to legally protect the unique elements of your brand, you need to accurately understand these complex standards and develop an appropriate strategy.
This is where our patent attorneys can help.
- Appropriate advice regarding distinctiveness: We will expertly judge whether the movement, color, sound, etc. you wish to protect has distinctiveness as a trademark, and if so, what are its strengths and weaknesses, based on the latest examination standards of the Japan Patent Office and past cases. In particular, if it is determined that the user's ability to distinguish is lacking, we can provide concrete suggestions on what measures should be taken, such as strategies to acquire the ability to identify through use.
- Developing an optimal application strategy: Based on our expert knowledge, we will advise you on which type of trademark (motion, color, sound, etc.) is most effective to apply for, depending on the brand element you want to protect, and how to express that trademark and include it in your application. We support the creation of appropriate documents, such as musical scores and waveform displays for sound trademarks, and color numbers and detailed explanations for color trademarks.
- Support for acquiring distinctiveness through use: When aiming to register a trademark based on distinctiveness through use, such as a color mark or sound trademark, gathering evidence is extremely important. As experts, we will provide specific support on how long and in what manner a product must be used to qualify as "distinctive power by use," what evidence (amount of advertising, sales, survey results, etc.) to collect, and how to organize and submit it effectively.
- Negotiations and amendments with the patent office examiner: If the patent office notifies you of reasons for refusal for the trademark you applied for, such as because it lacks distinctiveness, you need to accurately understand the content of the notification and make appropriate counterarguments and amendments to your application. These responses require specialized knowledge, and a patent attorney will negotiate with examiners on your behalf and carry out procedures to increase the possibility of registration.
- Advice on proper use after registration: Once a trademark has been registered, it is important to use it as registered to keep the rights valid. In particular, since determining "identity" for new types of trademarks is complicated, we provide advice on the appropriate usage of registered trademarks and reduce the risk of future non-use revocation trials.
The unique elements of your business, such as movement, color, and sound, are treasures that remain in consumers' memories and form a strong brand image. However, specialized knowledge and experience are required to legally protect these new elements and prevent them from being easily imitated by other companies.
As intellectual property experts, our patent attorneys will advise you on the best way to protect your unique brand elements and handle complex procedures on your behalf.
Summary
- ``Motion trademarks'', ``hologram trademarks'', ``color-only trademarks'', ``sound trademarks'', and ``location trademarks'' are new trademark types to protect modern and diverse brand expressions.
- "Distinctiveness" is essential for these registrations, but it is particularly difficult for trademarks and sound marks that consist only of color to have distinctiveness due to their nature, so acquiring "distinctiveness through use" is an important key.
- Even after registration, the "identity" of the registered trademark and the trademark used is important, and each type has its own criteria. There are also precautions to be taken when using the mark in combination with other marks.
- In order to understand these complex systems and properly protect brand elements, it is effective to have the support of an expert patent attorney.
Use a new type of trademark system to protect your great ideas and business identity.
If you would like to protect the unique elements of your business, such as movement, color, sound, and position, as a brand, please consult a patent attorney.
Based on our extensive knowledge and experience regarding new types of trademarks, we will propose the optimal protection strategy for your business. Please feel free to contact us.
[Contact] Intellectual Property Office EVORIX Patent Attorney Takefumi Sugiura
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).
