The Intellectual Property High Court decision of July 3, 2019 (Case No. 2019 (Gyo-Ke) 10004 — Presiding Judge Takabe)
◆ Main text of the case
【Summary of the Judgment】
- The mark in question consists of the alphabetical letters “E” and “Q” written horizontally in the commonly used font style, and the form or shape of or the combination of these letters has no distinctive feature. In industries related to motor vehicles, which is the designated goods covered by the application for the trademark registration, a combination of two alphabetical letters may be used as sign or code indicating types, models, classes, etc. of products, and the mark in question is found to have no particular difference in comparison with such a combination of two alphabetical letters. Therefore, the mark in question is found to be a “trademark which consists solely of a very simple and common mark” set forth in Article 3, Paragraph 1, Item 5 of the Trademark Act, and thus the mark in question normally may not be registered.
- Whether a mark falls under the Article 3, Paragraph 2 of the Trademark Act, more specifically, whether or not “consumers are able to recognize the goods or services as those pertaining to a business of a particular person as a result of the use of a trademark” should be judged comprehensively by taking into account the circumstances of use of the trademark such as the duration and area of actual use, the sales volume of goods bearing the trademark and the scale of business, and the duration and scale of advertisements of the goods bearing the trademark.
According to facts such as the form of advertisements carried out by the plaintiff for its electric car brand “EQ”, it can be said that the plaintiff has intensively carried out advertisements so as to impress upon consumers and/or traders who are interested in automobiles (including persons paying attention to the electric car and brand name announced by the plaintiff, which is a well-known automobile company) that the mark in question is the plaintiff’s new electric car brand. By taking into account the fact that the mark in question has been well known worldwide, the mark in question is found to be well known among consumers and/or traders to the extent that they are able to recognize the mark in question as that indicating the plaintiff’s electric car brand even though the duration of advertisements therefor is relatively short and the sales volume of electric cars with the brand name using “EQ” as a part thereof is not so large.
Therefore, since the mark in question corresponds to a “trademark which, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person” set forth in Article 3, Paragraph 2 of the same Act, the JPO’s decision erred in deciding that the mark in question is not eligible for registration.
- Regarding the summary of judgment 1, the court acknowledged that the “EQ” mark consisting of two alphabetical letters in common characters falls under Article 3, Paragraph 1, Item 5 of the Trademark Act. The foregoing is generally accepted in court cases (the Intellectual Property High Court decision on October 25, 2012 (Case No. 2012 (Gyo-Ke) 10359) [AO case], etc.), trial decisions (rendered on July 21, 2010, FUFUKU 2009-5195 [RS case], etc.) and trademark application practices (Part I, Chapter 7, Article 3 (1) (i) of Examination Guidelines for Trademarks).
- Regarding the summary of judgment 2, the court acknowledged, placing importance on the intensive advertising activities conducted for product branding and the acquisition of the quality of being globally well-known, that the “EQ” mark consisting of two alphabetical letters in common characters has acquired distinctiveness through the use thereof even though the duration of advertisements therefor is relatively short and the sales volume of the product is relatively small, that is to say, the court acknowledged that the “EQ” mark falls under Article 3, Paragraph 2 of the Trademark Act, and thus revoked the JPO’s decision which denied the same. This is a relatively rare case among court cases, trial decisions, and trademark application practices, and may serve as a reference.
【Keywords】Two alphabetical letters, EQ, Article 3, Paragraph 1, Item 5 of the Trademark Act, very simple, common, inherent distinctiveness, Article 3, Paragraph 2 of the Trademark Act, distinctiveness through use, Daimler
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Kei IIDA (the person in charge of this article)
Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)
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