[Trademark Basics] Can it be registered without “distinctive power”? Thorough explanation of the most important concepts that affect business

"I came up with a great name, so I want to register it as a trademark and keep it exclusive!"

In fact, one of the most common cases of trademark registration failures is a case where an application is filed with the Japan Patent Office with great enthusiasm, but it is rejected on the grounds that it lacks distinctiveness.

"It's just a name, why can't I register it?"

"Isn't it fine as long as it doesn't overlap with other companies?"

You might think so. However, when aiming to register a trademark, the keyword that cannot be avoided is "distinctiveness". If you do not have a deep understanding of this concept, you will not only waste application fees and time, but you will also find it difficult to create a ``brand that sells''.

In this article, we will thoroughly explain "distinctiveness", which is the most important requirement for trademark registration, from its essential meaning, to specific cases in which it is determined that a word lacks distinctiveness, and to measures to be taken to register a word without distinctiveness as a trademark.

1. What is the distinctiveness of a trademark?

First of all, this word "distinctiveness" may sound a bit difficult as a legal term, but it is a very important concept that can be said to be the "heart" of a trademark. Let's take some time and carefully unravel this.

1-1. The power of “marks” to distinguish “me” from “you”

To put it simply, "distinctiveness" in trademark law means "the ability to distinguish one's own products and services from those of other companies."

In technical terminology, it is also called "ability to distinguish between self and other products."

Imagine it. You are in the drinks section of a supermarket. There, there are rows and rows of plastic bottles filled with black liquid, nothing written on the labels.

Can you tell which is "Coca-Cola", which is "Pepsi", and which is "Unknown Cola"? Probably not possible.

At this time, the "Coca-Cola" logo written on the package is an identification sign that tells us that this is a Coca-Cola product (and not another company's cola).

In other words, discernment can be said to be the very ability to derive the answer (designated purchase) to the question "Whose product is this?"**

1-2. Why can't it be registered without discernment? (Word monopoly problem)

So, why does the Japan Patent Office refuse to register "trademarks that lack distinctiveness"?

There are two main reasons for this.

① Consumers will be confused

For example, suppose there is a bakery that has registered the word "delicious" as a trademark.

Even if a consumer sees a signboard that says ``delicious bread,'' it is hard to tell whether it is a ``bakery with a brand name called ``delicious'''' or simply ``bread that tastes delicious.''

The essence of a trademark is to clarify "whose product it is," but there is no point in registering a word that cannot fulfill that role.

② Because words are “everyone’s common property” (public interest reason)

This is the most important reason. Trademark rights are powerful rights that allow you to ``exclusively'' use specific words. Once registered, other companies will no longer be able to use the word.

What would happen if a greengrocer registered the word "apple" as a trademark and had a monopoly on it?

Other greengrocers will no longer be able to use the word "apple" in their stores, and will have to use other words such as "red, round fruit." This is no way to do business.

Trademark law is based on the idea that no one person should have a monopoly over ``general words that everyone in the industry should use'' and ``words necessary to describe the contents of a product.''

In order not to hinder the development of industry, we intentionally do not give exclusive rights to words that have no discernible meaning (= everyone should use them).

1-3. “Discrimination” = the source of “brand power”

From a business perspective, discrimination is the very essence of brand value.

Trademarks are said to have three functions:

1. Origin display function: Indicates "who made it".

2. Quality assurance function: Creates an expectation that "with that mark, the quality must be good."

3. Advertisement function: Just looking at the mark reminds people of the product.

All of these functions are based on the premise that they can be clearly distinguished from other companies (= having the ability to distinguish).

Even if you sell a computer with the name "high-quality computer," no one will recognize it as a brand. It is precisely because a name is clearly different from others (a name that is distinctive), such as "MacBook" or "VAIO," that it attracts fans and accumulates value as a brand.

In other words, understanding discernment is the first step to building a strong brand.

2. Six patterns (specific examples) that are judged to have “no discernment”

Now that you understand the concept, let's talk about practical matters.

Let's take a look at the main patterns of rejection for "lack of distinctiveness" under the Japan Patent Office's examination standards (Article 3, Paragraph 1 of the Trademark Law). Please check to see if your naming matches any of these.

① Common name (Article 3, Paragraph 1, Item 1)

This is the name commonly used in the industry of the product or service.

• Example: The trademark "PC" for the designated product "PC".

• Explanation: The name cannot be registered as it is because it is difficult to tell who it belongs to. Of course, just using English (such as "PC" or "Personal Computer") is also a no-no.

② Commonly used trademark (Article 3, Paragraph 1, Item 2)

It is a word that was originally a trademark to distinguish it from others, but has become common as a result of being widely used by peers.

• Example: The trademark "Masamune" for the designated product "sake".

• Example: Accommodations such as "tourist hotel".

• Explanation: A word that many manufacturers use so much that it loses its power as a specific brand.

③ Descriptive trademark (Article 3, Paragraph 1, Item 3) *Most important

This is the pattern that is most likely to cause rejection. Words that simply describe the product's quality, raw materials, origin, efficacy, use, shape, etc. cannot be registered.

• Production area/sales area: "Tokyo", "Nihonbashi", "Hokkaido", etc.

• Quality/Contents: ``Delicious'', ``Very Spicy'', ``Excellent'', ``Fresh'', etc.

• Raw materials: "Wool" for designated products "clothing", "wheat" for bread, etc.

• Efficacy/Applications: "Whitening" for makeup, "removal" for detergents, etc.

These are merely "descriptions" that consumers need when choosing a product, and are not considered to function as a brand name (whose product it is).

④ Common names (Article 3, Paragraph 1, Item 4)

These are common surnames and names in Japan, such as those listed in many telephone directories.

• Example: "Sato", "Tanaka", "Suzuki", "Watanabe", "Shop Tanaka", etc.

• Explanation: "Sato" alone does not tell you which Mr. Sato's product is, so it is said to lack identification. However, it may be possible to register it by combining it with other words, such as "〇〇Sato," or by creating a special design.

⑤ Extremely simple and common mark (Article 3, Paragraph 1, Item 5)

Simple symbols, characters, shapes, etc.

• Example: "A", "1", "〇 (circle)", "▲ (triangle)", one or two Roman characters (such as "AB").

• Explanation: These are also basic symbols that everyone uses, so monopolization is not allowed.

⑥ Other items that lack discernment (Article 3, Paragraph 1, Item 6)

Although the above does not apply, it is considered to be lacking in discernment according to conventional wisdom.

• Example: Ground pattern (background pattern of the product), catchphrase (slogan-like text such as "Everyday Low Price"), era name (such as "Reiwa").

3. 3 ways to deal with being told that you have no discernment

"The name I came up with was exactly applicable to a 'descriptive trademark'..."

"I received a notice of reasons for refusal from the Japan Patent Office..."

Even in such a case, it is still too early to give up. Even words that lack distinctiveness may be able to be registered as trademarks if you are creative. Here we introduce three main measures.

Countermeasure 1: Combine with logo (shape)

Even if the characters themselves do not have distinctiveness, there are cases where the combination of characteristic logo marks (shapes) and designed characters can be recognized as having ``discrimination'' as a whole.

• How to: Create your own logo design and apply, not just a Gothic or Mincho font.

• Note: In this case, the scope of rights is often limited to "the logo design," and if a third party uses the same characters in "standard characters (ordinary font)," the rights may not be enforceable (it cannot be considered a trademark infringement). Please understand that the logo is only protected as a logo.

Measure 2: Add distinctive words (combined trademark)

A unique word with distinctiveness (such as a coined word) is attached to a word without distinctiveness (for example, "Tokyo") to form one long trademark.

• Example: "Tokyo" alone is not acceptable, but "Tokyo" + "Zebra (coined word element)" = "Tokyo Zebra" is OK.

• Advantages: Gaining discernment is relatively easy.

• Note: In this case as well, the rights extend to the entire "Tokyo Zebra," but you cannot prohibit other companies from using "Tokyo" alone.

Measure 3: Acquisition of discernment through use (Article 3, Paragraph 2)

This is a difficulty level of "Ultra C" level, but it is a method of "having been using it for many years, it has become famous, so it will be approved for registration."

Even if a word does not originally have any distinctiveness (such as a descriptive trademark), if it has been used exclusively for a long period of time and has been extensively advertised, it can be registered as an exception if it reaches a level where consumers all over the country recognize that ``when I think of this name, it is a product of that company.''

• Applicable hurdle: Extremely high. In order to prove your national recognition, you need to submit a huge amount of evidence, such as sales certificates, receipts for advertising expenses, newspaper and magazine articles, and survey results.

• Common Misconception: "I'm planning to become famous" is not acceptable. You need to be "already famous."

4. Judgment of discernment is determined by the relationship with "products/services"

There is one very important point here.

Whether or not a word has discriminatory power is not an absolute thing, but rather determined relatively in relation to "what product or service it is used for."

What do you mean? Let's look at a concrete example.

Example: "Apple"

• If the specified product is "fruit":

  "Apple" is a common name referring to the apple itself, and has no distinguishing power (cannot be registered). This is because it would be a problem if someone monopolized the ``apples'' when selling apples.

• If the specified product is a "PC":

  Computers and apples have nothing to do with each other. It's not even a word that describes the quality or shape of a computer. Therefore, in the computer field, "Apple" is treated as a mere coined word, and has strong distinctiveness (can be registered).

Example: "Takkyubin"

"Takkyubin" is a registered trademark of Yamato Holdings. However, in general conversation, the word tends to be used to refer to the entire courier service. If someone tried to apply for ``Takkyubin'' today, it would be rejected as an ordinary name (or someone else's well-known trademark), but back then it was recognized as having distinctiveness.

In this way, the deciding factor is "how the word is perceived in the industry."

5. Naming tips for creating a strong trademark

If you want to avoid rejection based on distinctiveness and have strong rights as a brand, we recommend that you consider naming in the following direction.

Create coined words

Creating a completely new word is the strongest trademark.

• Example: "SONY" "Kodak" "Haagen-Dazs"

• Since the word has no meaning, there will be no problems with misidentification of quality or descriptive trademarks, and the possibility of registration is very high. In addition, it will be easier for consumers to remember the words as ``special words unique to that brand.''

Aim for suggestive marks

Rather than directly explaining the content of the product, choose words that give a vague impression.

• Example: "Netsu-sama sheet" (cooling sheet). Rather than directly saying "cooling gel," it gives an image of the effect.

• Points: The line between "explanation (description)" and "implication" is very vague, and the judgment may differ depending on the examiner. However, attacking this area is often advantageous from a marketing perspective (in terms of ease of understanding).

Select arbitrary words (Arbitrary Marks)

This is a way to attach existing words to completely unrelated products. Examples include the aforementioned Apple (PC) and CAMEL (cigarettes). It is unexpected and has strong discernment.

6. Summary: Preliminary research before application is vital

In trademark registration, "distinctiveness" is the first and biggest barrier.

1. Discrimination is a "mark that distinguishes products from other companies' products" and is the source of a brand.

2. Words (descriptions, quality indications, common names) that are "common property" should not be monopolized.

3. Even words that have no distinguishing power may be registered by combining them with logos or coined words.

4. The strongest countermeasure is to name it with a "coined word" or "completely unrelated word" from the beginning.

Even if you think, "This name will definitely work!", there are many cases where professionals will reject it as a "descriptive trademark". There is also a strategy of using words that have no distinguishing power and registering them as a logo, but in that case, it is necessary to understand the risk that the scope of rights will be narrowed.

Before you panic when you receive a ``Notice of Reasons for Refusal'' after filing an application, first ask yourself at the naming stage, ``Does this word have any distinctiveness?Are you taking away someone else's words?''

If you have any concerns at all, we strongly recommend that you request a preliminary investigation, including whether or not you have the ability to discern, from a patent attorney or other expert before filing. That's the quickest way to protect your precious brand.

Finally: next step

I hope this article has helped you understand the depth and importance of "discernment." However, actual examinations are carried out on a "case-by-case" basis.

"I understand the logic of discernment. But what about my naming of this?"

"I looked it up with J-PlatPat, but I can't make a decision..."

If you think so, we recommend that you take advantage of "free consultation" with experts as your next action, instead of using AI or making your own decisions.