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 distinctiveness:
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 goods/services;
(2) The mark is indication of property or advantage of the designated goods/services;
(3) The mark is indication of quality or feature of the designated goods/services;
(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. 2010-26967).
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 No. 2011-13096).
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.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
