Explanation of the Handling of Trademark Application Consisting of Geographical Names in Japan and overseas

Transcription

1 Explanation of the Handling of Trademark Application Consisting of Geographical Names in Japan and overseas 1. With regard to the handling of trademarks consisting of geographical names both in Japan or overseas, a partial revision was made on the Trademark Examination Guidelines relating to Article 3(1)(iii) and (vi) of the Trademark Act. The partially revised Trademark Examination Guidelines (Revised 10th Edition) was issued and came into effect on November 1, The provisions of the Trademark Examination Guidelines relating to the aforementioned handling of trademarks are explained as follows. Related article: The Extracts of Article 3(1)(iii) Article 3 Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark: (iii) consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision; Examination Guidelines for Trademarks: Chapter I, Part5, (1) A trademark indicating a geographical name in Japan or overseas does not necessarily require that the designated goods are produced or sold or designated services are provided practically at the place indicated by the geographical name. Where a consumer or a trader generally recognizes that the designated goods will be produced or sold or the designated services will be provided at the place indicated by the geographical name, the trademark falls under the provision of this Item as indicating origin or place of sale of the goods or location of provision of the service. The names of states, famous geographical names (including the names of administrative zones, former state names and foreign geographical names), the names of shop streets (including famous foreign busy streets), maps, etc. are considered, in principle, as the place of origin of goods or the place of their sale or the location of provision of services (including the place of trading). [NOTE] "A geographical name in Japan and overseas" shall include a name or a map indicating a nation, a capital, a state, a prefecture, the capital of a state, a province, the capital of a province, a county, a prefectural capital (the capital of a prefecture),

2 an old nation, an old area, a country, a city, a special city ward, an administrative area, a busy downtown street, a sightseeing area (including its location and surrounding areas), a lake, a mountain, a river, or a park, etc. (the same shall apply hereinafter). (2) Due consideration shall be given that even if a trademark indicating a geographical name in Japan or overseas does not fall under the provisions of this Item, the trademark may fall under the provision of Article 3(1)(vi). [The former half of the Trade Examination Guideline (1)] 1. The first sentence of the Trade Examination Guidelines (1) specifies how to handle the examination of a trademark consisting of a geographical name in Japan or overseas, to decide whether it corresponds to "the place of origin or place of sale of the goods, or location of provision of services" as prescribed in Article 3(1)(iii) of the Trademark Act. 2. In other words, it specifies that "the place of origin or place of sale of the goods, or location of provision of services" stipulated in Article 3(1)(iii) of the same Act shall fall under the same Item in the following cases: (a) when the designated goods are actually produced or sold, or the designated services are provided in the place indicating the geographical name, and (b) when it is judged that the designated goods are generally recognized by consumers or traders as being produced, sold or the designated services are generally recognized as being provided in the place indicating the geographical name. 3. Of the aforementioned 2, the case of (a) is obvious. Regarding (b), a general recognition by consumers or traders is sufficient. This handling of an application for trademark registration was based on the intent page 1277 in the clause-by-clause commentary of the Industrial Property Act (Industrial Property Rights Act Version 19)) that since the place of origin, place of sale of the goods, or the location of provision of services are necessary indications during the course of distribution or during the business processes, any person will need to use it and will want to use it. Therefore it would not be appropriate to allow an individual to have its exclusive possession. Furthermore, these are already commonly used or will be commonly used in the future, and therefore cannot be recognized as being capable of distinguishing the goods or services of one undertaking from those of other undertakings. 4. Moreover, this handling of trademarks also takes into consideration the holding of the Jo-jia (Georgia in Japanese) Case (No.68 case of appeal in 1985, the Supreme Court decision in January 23, 1986). The holding states that in order for an application for trademark registration to be considered as consisting solely of a mark indicating, in a common manner,

3 the place of origin or place of sale of goods described in Article 3(1)(iii), it is not necessarily required that the designated goods are produced or sold practically at the place indicated by said trademark and it would be sufficient that a consumer or a trader generally recognizes that said designated goods will be produced or sold at the place indicated by said trademark. 5. In the past, actual judgment on whether a trademark fall under the provision of Article 3(1)(iii) of the Trademark Act has been made by examining "the place of origin or place of sale of the goods, or location of provision of services" based on the aforementioned viewpoints of handling of an application for trademark registration. With the partial revision of the Trademark Examination Guidelines in November 2012, it was decided that the practice of examination should be clearly defined in the Trademark Examination Guidelines so as to protect the use of geographical names in Japan and overseas within the frame of the current legislation. 6. Regarding.. when it is judged that the designated goods are generally recognized. in aforementioned (b), if any cause is recognized by which the designated goods produced or sold or the designated service is provided in the place indicated by the geographical name, a trademark, in principle, is considered as satisfying the conditions of.. when it is judged generally recognized. and is treated as such, even if the fact that the trademark is indicating "the place of origin or place of sale of the goods, or location of provision of services" is not written in a dictionary or any other literature. [The second sentence of the Trademark Examination Guidelines (1)] 7. The second sentence of the Trademark Examination Guidelines (1) contains examples of geographical names in Japan and overseas that are applicable to "the place of origin or place of sale of the goods, or location of provision of services." As it is highly probable that geographical names are recognized as indicating the place of origin or place of sale of said goods, or location of provision of said services, we will deal with the geographical names as those that are applicable to "the place of origin or place of sale of the goods, or location of provision of services" described in Article 3(1)(iii) of the Trademark Act as a general rule. [Trademark Examination Guidelines (1) (Notes)] 8. (Note) of the Guidelines (1) shows examples that are applicable to "geographical names in Japan and overseas." These applicable examples are described in the Trademark Examination Manual "trademarks relating to the name of foreign place, etc." and "trademarks relating to the name of mountain, river, building, etc." For the purpose of promoting awareness, applicable examples are also shown in this Trademark Examination

4 Guidelines. [Trademark Examination Guidelines (2)] 9. It was clearly defined in the Trademark Examination Guidelines (2), that even if a trademark indicating a geographical name in Japan or overseas does not fall under Article 3(1)(iii) of the Trademark Act because of not being recognized as "the place of origin or place of sale of the goods, or location of provision of services," it may fall under Article 3(1)(vi), if it is not capable of distinguishing the goods or services of one undertaking from those of other undertakings. 10. When a trademark consisting of a geographical name in Japan or overseas is applied for examination operation, at first, an examination is carried out on whether it falls under Article 3(1)(iii) of the Trademark Act from the viewpoint of the relationship between the trademark and the designated goods or the designated service, followed by an examination on whether it falls under Article 3(1)(vi) when the designated goods or the designated service does not fall under Article 3(1)(iii). 11. Therefore, when there are two or more or designated goods or designated services, we should keep in mind that one designated goods or one designated service may be applicable to Article 3(1)(iii) of Trademark Act, and other designated goods or other designated services may be applicable to Article 3(1)(vi).

5 Related article: The Extracts of Article 3(1)(vi) Article 3 Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark: (vi) in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person. Examination Guidelines for Trademarks: Chapter I, Part8, A trademark indicating the geographical name in Japan and overseas of the foundation place of a business operator and the address of a business place, the delivered place and the temporary storage place of designated goods, or the stop-off place when a designated service is provided (a harbor and an airport, etc.) or the like (hereinafter referred to as "the foundation place of an employer, etc.") or a trademark indicating the geographical name in Japan or overseas of a place generally recognized as the foundation place of a business operator, etc., even if it does not fall under the provision of Article 3(1)(iii), shall fall under the provision of this Item, in principle, on the basis that as the foundation place of a business operator, etc., it has been used generally in many cases or will be used for certain and generally in the future. 1. This Guidelines stipulates that when a trademark consisting of a geographical name in Japan or overseas does not fall under Article 3(1)(iii) of the Trademark Act, but the trademark consists of a geographical name indicating the foundation place of a business operator or it is regarded as consisting of a geographical name indicating the foundation place of a business operator, as a general rule, it falls under Article 3(1)(vi). 2. Article 3(1)(vi) stipulates that in addition to those listed in each of the preceding items (Item (i) to Item (v)), a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person. 3. In a decision relating to Article 3(1)(vi) of the Trademark Act, the ruling says (trademarks by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person) will include not only ones which formation do not take the form of a trademark so that they are not capable of distinguishing the goods or services of one undertaking from those of other undertakings from the very first, but also trademarks that do not fall under Article 3(1)(i)-(v) but are presumed not to function as a trademark since the formation itself is not capable of distinguishing the goods or services of one undertaking from those of other undertakings. Furthermore, trademarks that are not regarded as being not capable of

6 distinguishing the goods or services of one undertaking from those of other undertakings in terms of the formation itself and regarded as not functioning as a trademark, may possibly be regarded as being incapable of distinguishing the goods or services of one undertaking from those of other undertakings and failing to function as a trademark if actual state of transaction is taken into consideration. (2005 Appeal No UVmini, March 9, 2006 Intellectual Property High Court.) 4. Keeping in mind the purpose of the provision in the aforementioned section 2. and the decision mentioned in 3, it can be thought of that trademarks which do not fall under Article 3(1)(iii) may fall under Article 3(1)(vi) if they are presumed as being not capable of distinguishing the goods or services of one undertaking from those of other undertakings in terms of formation itself and failing to function as a trademark. 5. In the case that a geographical name in Japan and overseas indicating the foundation place of a business operator and the address of a business place, the delivered place and the temporary storage place of designated goods, or the stop-off place when a designated service is provided (a harbor and an airport, etc.) or the like indicates ( or is recognized as) "the place of origin or place of sale of the goods, or location of provision of services", the provision of Article 3(1)(iii) shall be applied. However, as in the following examples 1 and 2, when a geographical name is not considered as an indication (or is not recognized as) "the place of origin or place of sale of the goods, or location of provision of services", it may be difficult to apply Article 3(1)(iii) to a trademark indicating such geographical name. Example 1. Trademark チューリッヒ (Zurich in Japanese), Designated Services, Class No.36 Conclusion of Insurance Contract Regarding an application for trademark registration for a trademark indicating " チューリッヒ (Zurich in Japanese)" as a name for a designated services relating to Conclusion of Insurance Contract", the premise is that the service concerned will be provided in Japan. A consumer or a trader, in our country, who has come to know that the said trademark will in general not recognize that the said trademark" チューリッヒ (Zurich in Japanese)" is a name indicating the location of provision of services. Therefore, it is difficult to apply Article 3(1)(iii) to this trademark. However, if a business operator, whose foundation place of business and the address of the business place is " チューリッヒ (Zurich in Japanese)", wants to perform his business in Japan, " チューリッヒ (Zurich in Japanese) as a name indicating the foundation place or the address of the business place may be used for advertisement and business documents. Under

7 this circumstance, it is difficult to say that the said " チューリッヒ (Zurich in Japanese)" is capable of distinguishing the services of one undertaking from those of other undertakings. Example 2. Trademark ジュネーブ (Geneva in Japanese), Designated Services, Class No.33 Sake If an application for trademark registration concerns a trademark indicating ジュネーブ (Geneva in Japanese) as a name of a designated Sake goods, consumers in our country are less likely to think the said goods is produced in the said place and also consumers and traders in our country are less likely to buy the said goods at the said place. As consumers and traders in our country who come to know the said trademark do not generally recognize the said trademark of ジュネーブ (Geneva in Japanese) as a name indicating the place of goods or place of sale of the goods, it is difficult to apply Article 3(1)(iii) to this trademark. However, if a business operator in our country who manufactures and sells "Sake" wants to export "Sake" to the said place, ジュネーブ (Geneva in Japanese) which indicates the place of delivery of the goods may be used in business documents. Under this circumstance, it is difficult to say that the said ジュネーブ (Geneva in Japanese) is capable of distinguishing the goods of one undertaking from those of other undertakings. 6. The foundation place of a business operator, the address of the business place, or the delivered place of the designated goods described in the examples 1 and 2 do not fall under the provision of Article 3(1)(iii), but generally it has already been or will be certainly used in advertisements or business documents. 7. Even if a trademark consisting of a geographical name in Japan and overseas does not fall under Article 3(1)(iii) of the Trademark Act, when the said trademark indicates (or is acknowledged to indicate) the foundation place of a business operator, the address of the business place, or the delivered place of the designated goods, the trademark is deemed as not capable of distinguishing the goods or services of one undertaking from those of other undertakings. In order to clarify that such trademark shall fall under Article 3(1)(vi), a new rule was introduced in the partial revision of the Trademark Examination Guidelines issued in November 2012.

8 Examination Guidelines for Trademarks: Chapter I, Part8, Even for trademarks listed in Items 1 to 8 mentioned above, those which, as a result of usage, have been recognized by customers as goods or services according to the business of some people, shall not fall under the provision of this Item. 1. Even if a trademark that is applicable to the provisions 1. to 8. of the Trademark Examination Guidelines for Article 3(1)(vi) of the Trademark Act, has become recognizable for consumers as an indication of goods or services pertaining to a business of someone, this trademark does not fall under Article 3(1)(vi). Although only trademarks that are applicable to items (iii) to (v) of the preceding paragraph are subject to Article 3(2), this Guideline stipulates the concept regarding the application of Article 3(1)(vi) for confirmatory purposes. 2. The Trademark Examination Guidelines contains a description saying that in trademarks that are applied by the Trademark Examination Guidelines 1 to 8 for Article 3(1)(vi) of the Trademark Act. This clearly defines that in the examination of Article 3(1)(vi) of the Trademark Act, not only a trademark that falls under the Trademark Examination Guidelines 1 to 8 for Article 3(1)(vi) of the Trademark Act but also a trademark which is regarded as possibly being applicable to Guidelines 1 to 8 due to other reasons shall not fall under Article 3(1)(vi), if it is considered that the trademark has acquired distinctiveness through use. (Note) Click below to see the Examination Guidelines for Trademarks Examination Guidelines for Trademarks: Article 3(1) (iii) (Indication of Origin, Place of Sale and Quality of the Goods, or Indication of Location and Quality of Provision of the Services) Article 3(1) (vi) (Trademarks Lacking Distinctiveness in Addition to Those Mentioned in Each of the Preceding Paragraphs)