The Bill for partial amendment of the Trademark Act, which enables non-traditional marks to be registered, was just enacted by the Diet on April 25, 2014.
It is likely that the date when trademark applications for the non-traditional marks are accepted under the amended new Trademark Act (hereafter, referred to as “New Act”) will be April 2015.
In the New Act, the definition of trademarks has been redefined as “any character(s), figure(s), symbol(s), three-dimensional shape(s), color(s) or any combination thereof, or sound, or other sign(s) stipulated in the government ordinance, all of which can be recognized by perception of human beings” to clearly indicate that registration for non-traditional marks is available.
In view of the New Act, the following non-traditional marks will be registrable:
1) Color marks (both single color and combination of colors, without delineated contours)
2) Sound marks
3) Motion marks (probably including hologram marks)
4) Other marks stipulated in the government ordinance*
*The contents thereof have not been made public yet. However, it is said that registration for position marks will be available.
At the same time as the Bill was enacted, the additional resolution of the Bill was passed the Diet. Said Diet resolution stipulates that an appropriate action for adoption of registration for non-traditional marks other than the above 1) to 4) should be taken if necessity for protecting said non-traditional marks increases.
Under the New Act, in order to file a new trademark application for the above non-traditional mark, an applicant needs to submit an explanation of the applied-for mark and/or a specimen of the mark. Since these matters will be taken into account in determining the scope of the trademark registration, it will be important for the applicant to submit the appropriate materials.
Due to the adoption of a sound mark registration system, it is likely that use of a sound mark may be in conflict with a prior copyright or “neighboring rights” of a copyright. The “neighboring rights” are held by performers, producers of phonograms, broadcasting organizations and wire-broadcasting organizations and in the New Act, the term “neighboring rights” is newly inserted. As long as use of a sound mark is in conflict with said “neighboring rights”, said use is not feasible.
The New Act stipulates that if someone uses a color mark, sound mark or motion mark which is the same as or confusingly similar to a registered trademark in Japan without having intention of unfair competition before the New Act comes into effect, he/she holds a use right of the mark within the range of his/her actually existing business at the time of the effective date of the New Act.
The New Act also stipulates that if the above three types of non-traditional marks had been famous among traders since before the New Act comes into effective, users of said famous non-traditional marks hold use rights of their non-traditional marks. In this case, said use right is not limited to the range of their actually existing business at the time of the effective date of the New Act.
The examination guideline and criteria used in the examination of a trademark application for a non-traditional mark have not yet been determined. If you or your client is interested in filing a trademark application for a non-traditional mark in Japan, we can provide you with any follow-up that you require. As you may be aware, the Japanese Trademark Act adopts the first-to-file principle. Thus we recommend anyone interested in filing an application for a non-traditional mark to do so as soon as the amended new Trademark Act comes into effect.