7New Types of Trademarks

With business transactions by Japanese companies expanding internationally at a rapid pace,
the substantive harmonization of countries’ trademark systems is occupying an increasingly
important place. However, while new types of trademarks, including sound, olfactory and motion
trademarks, are not subject to protection in Japan, they have already been protected in the UnitedStates, European countries including the United Kingdom, Germany, France and the OHIM, andAustralia. Given this, this study considered a desirable means of protecting new types of trademarks
under the Trademark Act in Japan, focusing on the needs, international circumstances and legalissues that would arise if such trademarks were made subject to protection in Japan. In other words,
as the number of countries where new types of trademarks are subject to protection increases, thisstudy analyzed and summarized the new types of trademarks that should be protected in Japan,
considering the perspective of international harmonization, including responses to the Madrid system,
as well as needs seen by type, and the status of filing and registration in other countries.

I

Background and Details of theProblemHowever, such trademarks are not currently
subject to protection in Japan.

(1) As corporate activities develop, themethods of differentiating one’s own
goods/services from those of others are
becoming increasingly diverse. Under thesecircumstances, not only traditional signs
consisting of conventional characters andfigures but also new types of signs, such as
characteristic sounds used for television orradio advertising, are being used as signs
that indicate one’s own goods/services.

(3) Given this situation, we carried out aresearch on a desirable means of protectingnew trademarks under the Trademark Act inJapan, focusing on the needs, international
circumstances and legal issues, etc. thatwould arise if such trademarks were madesubject to protection in Japan.

(2) New types of trademarks (hereinafter
called “new trademarks”) are subject toprotection under the trademark laws of major
foreign countries, including the UnitedStates and European countries. In addition,
the number of countries where newtrademarks are subject to protection is also
increasing in the Asia-Pacific region.

(4) Incidentally, the “new trademarks”
covered by the study in this report are“motion,” “hologram,” “color,” “position,”“trade dress,” “sound,” “olfactory,” “taste” and“texture or feel” trademarks. Out of these,“motion,” “hologram,” “color,” “position” and“trade dress” trademarks are of a visible type,while “sound,” “olfactory,” “taste” and“texture or feel” trademarks are of anon-visible type.

<<Reference 1>> Protection Status in Major Countries (○ = All types of trademarks are subject toprotection)
SouthTaiwanUSOHIM
UKFrance Germany Australia
ChinaKorea
VisibleSound and△*3○○○○○○ones*1color*2*1 Trademarks of color, motion, hologram, etc. Protection started in July 2007. At present, alegal revision to make all types of trademarks subject to protection is planned.
*2 A legal revision to make all types of trademarks subject to protection is under examination.
*3 A legal revision to make all types of trademarks subject to protection is under examination.
The current subject-matter of protection is the same as in Japan.
●IIP Bulletin 200852 ●

<<Reference 2>> Number of Countries Where New Trademarks are Protected*4SoundSoundTexture
SimpleOlfactory
Taste
Hologram(musical)(unmusical)
or feel
color
38

2820

1１4532

Motion21*4 Based on the WIPO survey (SCT/16/2, published in September 2006). The number ofcountries that answered “Yes” to the following question was counted: “Are the following signs
registrable based on laws and regulations or the government office’s operations?”

IIStudy Method

The following activities were conducted:(a) holding meetings for a study committee
consisting of people of learning andexperience, intellectuals from industrial
circles and other people with expertknowledge (seven meetings in total), (b)conducting questionnaire and interview
surveys to understand the needs concerning
new trademarks, (c) studying, organizing andanalyzing examples of use of new trademarks
in other countries and other countries’
systems, and (d) collecting and organizing
documents and court precedents in Japanand abroad.

IIIProblems, etc. with the Legal
System if New Trademarks Are
Made Subject to Protection inJapanThe main opinions are as follows:1

Which types of new trademarks canbecome subject to protection?

(1) A trademark right is a right toexclusively monopolize the use of a
trademark for goods/services. Therefore,a clear identification of the trademark isimportant.
(2) Trademarks for which the following (a) to(e) are easily conducted are considered tobe relatively clearly identified: (a)statement of the trademark in theapplication, (b) submission of the
trademark itself if it is impossible tostate the trademark in the application(e.g. submission of a CD on which thesound of breaking glass is recorded), (c)lengthy storage of the trademark at the●JPO (e.g. “odor, scent or smell” itself is
impossible to store), (d) publication of thestated trademark or the trademark itself,and (e) access to the registeredtrademark by third parties.
(3) Visible trademarks, such as “motion
trademarks”
and“hologramtrademarks,” and “sound trademarks”
can easily satisfy requirements (a) to (e)in (ii) relatively. For “olfactory,” “taste”
and “texture or feel” trademarks,
continued consideration is necessary
because it is technically difficult to store
these trademarks at the JPO over a long
period of time, and because it is not easy
for third parties to understand the rights
for these trademarks, as it is difficult topublish them via the Internet.
(4) The methods of excluding trademarksthat are not clearly identified from thesubject-matter of protection are (a)making all new types of trademarks
subject to protection and including “clearidentification of the trademark” in therequirements for a “trademark” or“registration,” or (b) individually picking
up types of trademarks that are easy toidentify clearly and making suchtrademarks subject to protection (e.g.
adding to the definition of “mark”).

2

Functional trademarks

There is an idea of precluding theregistration of new trademarks that areindispensabletoensure
afunction(functional trademarks). On the other hand,
it is also considered sufficient to refuse
functional trademarks on the grounds thatthey lack distinctiveness.

53 ●IIP Bulletin 2008

3

Adjustment
withother(copyright, design right, etc.)

Itisconsidered
problematictoubstantially extend the term of protection of
copyright, etc. by granting a trademark rightto a subject equivalent to the subject-matterof a copyright, etc. for which the term ofprotection has expired, and not to consider
the fact that a trademark conflicts withanother person’s copyright, etc. to be aground for unregistrability. On the otherhand, it is considered that relationships withanother person’s copyright, etc. can beorganized based on Article 29 of theTrademark Act as it is at present. In addition,
it is also considered that this question should
be understood not as a problem concerning
only new trademarks, but as one concerning
trademarks as a whole.

4Influence on the Trademark ActThe major items for which legal revision
is considered necessary are (a) definition of a
trademark, (b) definition of use (e.g. phoneticuse) and (c) the scope of right of a registeredtrademark, etc.

5

Other viewpoints(1) Coordination with the Unfair Competition
Prevention Act is necessary. Protection
under the Trademark Act is superior tothat under the Unfair Competition
Prevention Act on some points, including
predictability and stability of rights. In
addition, responding by border measuresor the Madrid Protocol is also possible.
(2) Where a trademark stated in anapplication (or a trademark submitted on
a CD, etc.) is not clear, it is expected thatthe applicant will be asked to explain thetrademark. Thus, further considerationis necessary with regard to thepositioning of this “explanation of thetrademark” (e.g. influence on the scope ofright/filing date and the acceptability ofamendments).
(3) It is also necessary to pay attention to●IIP Bulletin 2008

compliance with treaties including he
Madrid Protocol and the Trademark Law
Treaty.

rights6

Determination
trademarksofsimilarityof

Regardingthedeterminationofsimilarity of trademarks, it is basicallyappropriate to use the same determination
method as at present, including the methodof observing trademarks. However, since new
trademarks are trademarks of types that do
not exist at present, including non-visible
trademarks, it may be determined whether
such a trademark is likely to mislead orcause confusion regarding the source ofgoods/services, comprehensively considering
the impression and image that consumers
receive when seeing the trademark, andtaking into account not only the threeelements for determination that are used indetermining the similarity of trademarks
subject to protection under the current law –namely, “appearance,” “pronunciation” and“concept” – but also additional elements fordetermination (for example, for a “soundtrademark,” the “way of catching people’sears” in consideration of the characteristic ofthe “sound”). In addition, for “motiontrademarks” and “sound trademarks” thatare characterized by change over time, it isalso necessary to examine determination
based on temporal factors.

7

Main opinions advanced with respect
to each type(1) It is necessary to organize the principleof one application for one trademark
with respect to “motion trademarks” and“hologram trademarks,” various kinds ofwhich may arise.
(2) It is difficult to identify the scope of rightfor“tradedress,”which
coversambiguous images. Therefore, it issufficient to protect “trade dress” under
the Unfair Competition Prevention Act.
(3) There is an idea that trademarks
consisting
onlyof“sound”lack
54 ●United Kingdom, Germany, France andAustralia, there is another requirement:“thesigncanbegraphicallyrepresented.”z The countries subject to the survey
appear to refuse registration offunctional trademarks.
z With regard to adjustment withcopyright, etc., special adjustments are
not made in the United States,Australia and Taiwan. At the OHIM andin Germany, a registration will beinvalidated if it conflicts with priorcopyright. In the United Kingdom andFrance, conflict with prior copyright isstipulated as a reason for refusal. In
South Korea, there are adjustment
provisions that are similar to those inJapan.
z With regard to determination ofsimilarity, there are no countries thatadopt special determination standardsfor new trademarks that are different
from those for traditional trademarks.
z “Color trademarks” are considered toinherently lack distinctiveness in theUnited States and Australia, and it isthus necessary to prove that therelevant color trademark has acquired
distinctiveness. This is essentially thesame at the OHIM and in the United
Kingdom, France and Germany.
z With regard to identification of a“color trademark,” in the United States,
it is necessary to state the name, thepretention and the manner of use of thecolor. In Europe, including the OHIM, it
seems that an internationally-recognizedcolor code is necessary to indicate color.
z In the United States, “olfactorytrademarks”
areconsideredtoinherently lack distinctiveness, and it isthus necessary to prove that therelevant trademark has acquired
distinctiveness based on use.
z In the United States and Australia,“olfactory trademarks” are to be
expressed through the explanation ofrelevant signs. However, in Europe,including the OHIM, it is now

distinctiveness in principle, leaving
aside “sound trademarks” in which
distinctive words and sound are
combined, such as music with distinctive
lyrics. On the other hand, mere “sound”
is considered to be distinctive if it isunique and has distinctive character.
(4) Only a few “olfactory,” “taste” and“texture or feel” trademarks have beenregistered in other countries. Therefore,
itis
questionable
whethersuchtrademarks
actually
functionastrademarks(whetherconsumers
recognize them as trademarks).

IVNeeds (Questionnaire and Interview
Surveys with Domestic Companies)(1) Companies using any type of new
trademarks account for 60%, and thosewithneeds(companies
desiring
protection ofanytypeofnewtrademarks) account for 82%.
(2) Needs by type are as follows: 63% for“sound trademarks,” 60% for “positiontrademarks,”
58%
for“hologramtrademarks,”
55%
for“motiontrademarks,” 42% for “color trademarks,”
25% for “olfactory trademarks” and 20%
for “taste/texture or feel trademarks.”(3) Regarding new trademarks as a whole, apositive opinion toward protection
through the granting of rights wasexpressed, from the perspective ofprotection of rights and stable operationof business. On the other hand, there
were concerns about the burden of
obtaining new rights and the burden ofmonitoring due to the introduction of
new trademarks, as well as theobtainment of rights by other persons.

VResults of Overseas Survey (MainItems)z In the United States, any signwhereby one’s own goods/services can be
distinguished from another person’s
goods/services is subject to protection.
However, at the OHIM and in the●55 ●IIP Bulletin 2008

considered almost impossible to registeran odor, scent or smell as a trademark
by representing it graphically, on thebasis of court precedents holding thatodor, scent or smell cannot be clearly
expressed by words or chemical
formulas, etc., although some suchtrademarks have been registered in thepast.

VI Summary
As the number of countries where new
trademarks are subject to protection
increases, it is necessary to consider new
trademarks that should be protected inJapan, considering the perspective ofinternational
harmonization,
includingresponses to the Madrid System, as well asneeds seen by type, and the status of filingand registration in other countries. Moreover,taking into account that it is essential thatthe scope of rights for new trademarks beclearly identifiable, it is necessary torecognize the following: (i) for visible
trademarks,
suchas“motion”
and“hologram,” and “sound” trademarks, there
are relatively many needs and examples ofregistration, and it is considered technicallypossible to identify the scope of rights; (ii) for“olfactory,” “taste” and “texture or feel”
trademarks, there are few needs andexamples of registration, and there are stillquite a lot of technical problems that have to
be solved.
(Senior Researcher: Mitsuhiro SHUNORI)●IIP Bulletin 200856 ●