The latest amendment to Japan’s Trademark Act allows for the registration of non-traditional marks. Since the new rules came into effect on April 1 this year, the JPO has received applications for 248 color marks, 194 sound marks, 117 position marks, 45 motion marks and three holograms.
The JPO representatives explained that the 607 applications they have received are more than they had originally expected and likely reflect pent-up user demand. The Office has a team especially tasked with examining these marks, but expects that it may take slightly longer to examine these applications, at least initially.
Applicants need to be aware of the specific requirements for each type of mark. For example, applicants for sound marks can provide an audio file for the mark, but the file must be submitted on a CD-R or DVD-R, be in the mp3 format, and must be no larger than five megabytes. Applicants may only submit one file for each mark.
When examined, sound marks will be evaluated for both the sonic elements as well as any lyrical elements.
Similarly, applicants for motion marks may submit a series of pictures that serve as frames showing how the mark moves. The JPO will accept up to 99 frames depicting the mark’s movements. These frames, rather than being evaluated individually, will be considered as a whole mark.
Distinctiveness will be an especially important issue for non-traditional marks. The JPO representatives said that single color and color combination marks are generally considered non-distinctive, although applicants may establish distinctiveness through use. In fact, the JPO has recommended that this may be the likeliest way to secure such a registration.
However, the test will be very stringent. The evidence establishing proof of prior use must be practically identical to the registration; even small differences would likely lead the examiner to find that there was no distinctiveness established by prior use.
As of yesterday, no non-traditional marks have been granted, but the JPO representatives said that they hope to be back next year with an update on how the office is handling these new applications.
