On April 1, 2016, the Japan Patent Office (JPO) introduced new
Examination Guidelines for Trademarks that include more specific
criteria for protecting mottos and catchphrases as trademarks. An
English translation of the new Examination Guidelines is not yet
available on the JPO website.
The new Examination Guidelines indicate that registration of the
following two types of marks would be refused due to lack of
1. A mark consisting solely of an advertising phrase of
designated goods/services, indicated in a common way;
2. A mark consisting solely of words indicating a corporate
mission or business
policy, in a common way.
As for the first type of mark (i.e. an advertising phrase), when
the examiner conducts a trademark examination to determine whether
or not the filed trademark, which could be a catchphrase, motto or
tagline, has distinctiveness, the examiner considers how the
concept of the mark relates to the designated goods or services, as
well as the composition of the mark. Further, the examiner searches
the actual status of the commercial transactions related to the
filed trademark. As a result of consideration and research, if the
mark falls under either one of the following (1) to (4), the
examiner will determine that the mark consists solely of an
advertising phrase of the goods/services:
(1) The mark is explanation of the designated
(2) The mark is indication of property or advantage of the
(3) The mark is indication of quality or feature of the
(4) The mark consists of advertising phrase of the designated
goods/services which is commonly used.
By contrast, if the mark falls under either one of the following
(a) or (b), the examiner will conclude that the mark does NOT
consist solely of an advertising phrase of the goods/services:
(a) The mark does not have direct or specific meaning in
connection with the designated goods/services;
(b) A third party does not use an identical or similar wording
to the mark while the applicant has been using the mark for a
certain period of time
For example, the registration of the mark "ECO-STYLE (with
ECO-STYLE in katakana)" designating goods in Classes 29, 30
and 32 was refused because the word "ECO-STYLE" was
commonly used as a slogan or advertising phrase in food industry
(Appeal against Decision of Refusal No. 2010-21956).
On the other hand, the registration of the mark "Advanced
Security for Life" designating goods and services in Classes
9, 37 and 45 including "surveillance cameras" was granted
because the mark does not indicate specific meaning or feature of
specific goods or services, and the phrase of "Advanced
Security for Life" was not commonly used as a slogan or
advertising phrase in Japan (Appeal against Decision of Refusal No.
As for the second type (i.e. a corporate mission or business
policy) the examiner conducts a trademark examination in almost the
same way as the first type. If (1) the mark is merely an indication
of property or advantageous feature of the company, or (2) the
wording of the mark is commonly used as expression of corporate
mission or business policy, the examiner will find that the mark
does not have distinctiveness. By contrast, if a third party does
not use an identical or similar wording for the mark, while the
applicant has been using the mark for a certain period of time, the
examiner will find that the mark has distinctiveness.
For example, the registration of the mark "KEEP THE LIFE
LINE" designating goods and services in Classes 6 and 37 was
refused because a phrase having a meaning of "keeping the
lifeline" is commonly used as expression of a corporate
mission or managerial policy (Appeal against Decision of Refusal
On the other hand, the registration of the mark "Innovation
for Tomorrow" designating goods in Class 12 was granted
because a phrase being identical or similar to the mark was not
used by a third party, and the mark had been used on the designated
goods when the applicant, who is a Japanese major automobile
company, ran television commercials for the products.
As the patent infringement matters often involve complex technologies and huge amounts at stake, it not just requires exercise of sound judicial wisdom by the Courts but also unswerving standards to be followed by them . . .
The decision highlights lessons relating to contracting with large software vendors and the risks with under-licensing.
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