Trademark

Practice on trademarks composed of alphabet characters and/or numerals in Japan

September 08, 2012
Basically, "very simple and common marks" are deemed indistinctive and unregistrable in Japanese trademark practice.  Typical examples of "very simple and common marks" are the marks composed of a couple of alphabet characters and/or numerals.
We have experienced the cases where foreign applicants requested us to file such trademarks but we had to decline the requests.  If you would like to file a trademark composed of alphabet characters and/or numerals, learning which trademarks are unregisterable in Japan is highly recommended.
The followings are useful information on this matter.

Examination Guidelines for Trademarks

The JPO have published the "Examination Guidelines for Trademarks in English for overseas users.  The guidelines indicate which trademarks composed of alphabet characters and/or numerals are deemed as "very simple and common marks" and unregisterable. 
Here are the excerpts from the “Examination Guidelines for Trademarks”;

Alphabet characters (Roman characters)

uregistrable*

trademarks composed of one or two Roman characters

unregistrable*

trademarks composed of a single Roman character accompanied by simplified Japanese kana characters

unregistrable*

trademarks composed of Japanese katakana characters representing the sound of a single Roman character

registrable

 

unregistrable

 

trademarks composed of Japanese katakana characters indicating the sound of two Roman characters

--this does not apply to trademarks connected with goods or services with respect to which Roman characters are customarily used as the symbols or marks of goods or services

unregistrable*

registrable

Trademarks composed of two Roman characters combined with “

--this does not apply to trademarks with two Roman characters combined with “&.”

unregistrable*

 

registrable

one or two Roman characters accompanied by “Co.,” “Ltd.,” or “K.K.,” if “Co.,” “Ltd.” or “K.K.” is judged to respectively mean “Company,” “Limited” or “Kabushiki Kaisha.”
--this does not apply to trademarks with two Roman characters combined with “&.”

registrable

Trademarks with two Roman characters indicated in a monograph like

* unregistrable even with a simple outline encircling characters

Numerals

unregistrable*

trademarks composed of numerals, in principle

unregistrable*

trademarks with a digit or two digits of numerals indicated by kana characters representing their sounds, for exampleワンツウ (one, two), トウエルブ (twelve) or じゅうに (twelve) or these indications accompanied by the numerals

unregistrable*

trademarks with more than two digits of numerals indicated by kana characters representing their sounds, for example, ワンハンドレッド アンド トウェンティスリー (one hundred and twenty three) ヒャクニジュウサン (one hundred and twenty three)

registrable

 

trademarks with more than two digits of numerals indicated by kana characters representing their sounds, for example, “ ワン ツウ  スリー” (one two three)

* unregisterable even with a simple outline encircling characters

Examples of registered trademarks

Here are some examples of registered trademarks of which types are not listed in the “Examination Guidelines for Trademarks".

Trademarks composed of three or more Roman characters in standard character:
  "ABC" (reg.No.5201383)
  "XYZ" (reg.No.5043972)


Trademarks with digits of numerals indicated by English in standard character:
  "ONE" (reg.No.485457)
  "TWO" (reg.No.4511732)
  "TEN" (reg.No.4509614)
  "TWELVE" (reg.No.4864657)

* Here we do not cover all the types of the registered trademarks composed of alphabet characters and/or numerals.  Please ask for other examples you are interested .

Secondary meaning

Even if a trademark falls under one of the types of "very simple and common marks" in the first stage, obtaining secondary meaning enables the trademark to be registered. 

H19(Gyo-ke)10050 ( a suit against appeal deicision ) is a good example where the trademark "DB9" for the designated goods "Automobiles" and others was judged registrable because proving secondary meaning was affirmed  by IP high court.

Please refer to the “Examination Guidelines for Trademarks" for further information to prove the obtained secondary meaning.
http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/tt1303-061_17_18.pdf

If you need more information in this matter, please contact us at http://en.aigipat.com/contact/index.html.

End of report 

HIROTA, Miho
AIGI Intellectual Property Law Firm

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