Practice on trademarks composed of alphabet characters and/or numerals in Japan
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
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.”
|
registrable |
|
* 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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