1. Regarding distinctiveness of the composition of the position mark in question (the “Applied Trademark”) (whether or not Article 3, Paragraph 1, Item 6 of the Trademark Act is applicable)
A determination on distinctiveness of a position mark should be made based on a comprehensive evaluation of a trademark as a whole, more specifically, in consideration of both a mark comprising the position mark and the position of the mark on the relevant goods.
In making a determination as to whether the Applied Trademark has distinctiveness or not, it is reasonable to consider general consumers as consumers of the designated goods of the Applied Trademark, that is, “combs for hair cutting” in Class 21.
In general, through-holes arranged on the backbone part of a cutting comb are recognized as measures to improve the function of the cutting comb, and are not understood as features of a mark which distinguishes its goods or services from those of others. The foregoing applies to a cutting comb having through-holes of the Applied Trademark.
Accordingly, the following composition itself of the Applied Trademark cannot be said to have distinctive character in light of attentiveness possessed by general consumers who are considered as consumers of the designated goods covered by the Applied Trademark.
① The Applied Trademark
② The detailed description of the Applied Trademark
The trademark for which registration is sought is a position mark, which is affixed to a certain position on goods etc. The trademark consists of a combination of figures of through-holes hollowed out in an elliptic shape which are arranged side by side at regular intervals in the long-side direction on the right and left part (excluding the center part between them) of the body of a comb having a plurality of teeth. A dashed line merely shows an example of the shape of a comb and is not a part of the trademark.
2. Distinctiveness acquired through use of the Applied Trademark (whether or not Article 3, Paragraph 2 of the Trademark Act is applicable)
From evidence produced by the plaintiff, it is recognized that combs sold by the plaintiff are well known among beauticians, hairstylists, etc., and that “a comb having holes” is perceived by many of them as an indication identifying the plaintiff’s products.
However, it is also recognized from the evidence mentioned above that combs sold by the plaintiff include more than a few combs which have different compositions or a different number of through-holes from that of the Applied Trademark (the similar product of the demandant in the trial [the plaintiff in this case]). It is not the composition of the Applied Trademark, namely, a group of seven through-holes respectively arranged on the right and left part, excluding the middle part, of the backbone part of the comb, but “a comb having holes”, that is perceived as a source indicator by beauticians and hairstylists. Therefore, there is a question as to whether or not the composition itself of the Applied Trademark can be determined, based on evidence, to have served as a mark which distinguishes its goods or services from those of others. Further, in light of the fact that general consumers should be considered as consumers or traders of the goods to which the Applied Trademark is affixed, the Applied Trademark cannot be found to have acquired distinctiveness generally among consumers or traders.
| Registration No. | Trademark Holder | Position Trademark and
Detailed Explanation of the Trademark (Excerpt) |
| No. 5804314 | DR.CI:LABO Co., Ltd. | 
The trademark consists of a figure colored in red which is affixed to the upper half of the side of the main body of a packaging container for goods.
|
| No. 5805761 | K.K. Secoma | 
The trademark consists of a figure affixed to the upper part of a glass window or a wall surface of a shop served as advertising medium. The trademark consists of a combination of band shape figures colored in white, orange, and white in order from top to bottom, and a plurality of circle figures. A part surrounded by a black dashed line in the figure shows a position of the position mark.
|
| No. 5807881
|
EDWIN Co., Ltd. | 
The trademark consists of a figure of a rectangle-shaped tab colored in red which is affixed to the left upper part of the back pocket of pants and on which the alphabetical letters “EDWIN” are displayed.
|
| No. 5858802 | Sony Interactive Entertainment Inc. | 
The trademark consists of three-dimensional shapes of buttons affixed to the upper right portion of a controller for operation of a game program.
|
| No. 5873740 | Kameda Seika Co., Ltd. | 
The trademark consists of a figure affixed to the upper left portion of a package container for rice confectionary or bean confectionary. The figure is composed of a vertical ribbon-like shape colored in blue, parts in contact with both left and right sides of the vertical ribbon-like shape which are colored in white, and a transversely elongated hexagonal shape formed with a thick red line which is arranged in the vertical ribbon-like shape, and a transversely elongated hexagonal shape formed with a thin red line which is arranged in the transversely elongated hexagonal shape formed with a thick red line, and a part in contact with the outer outline of the transversely elongated hexagonal shape which is colored in white, and the inner part of the transversely elongated hexagonal shape which is colored in white.
|
| No. 5874850 | Shiseido Co., Ltd. | 
The trademark consists of a figure affixed to the upper half of the center of the front of a packaging bag for cleansing cotton.
|
| No. 5918807 | KYOCERA Corp. | 
The trademark consists of a form of a knife blade, a color applied to the whole surface of the knife blade, a figure affixed to the upper left of the knife blade, and the alphabetical letters ”KYOCERA”.
|
| No. 5960200 | Kewpie Corporation | 
The trademark consists of a figure of a meshed pattern with thick red lines which is affixed to the upper approx. 2/5 part of the front face of a product package.
|
| No. 6015898 | Yamaha Corporation | 
The trademark consists of a three-dimensional shape of a flame which exists only on the right side of an electric violin.
|
| No. 6028117 | FRED PERRY (HOLDINGS) LTD. | 
The trademark consists of a figure of a laurel wreath affixed to the left chest of a polo shirt, and double lines affixed around the edge of the collar and around both the sleeve openings.
|
| No. 6034112 | Nisshin Foods Holdings Co., Ltd. | 
The trademark consists of a combination of a figure attached to the periphery upper part of a product package, and a figure attached to the periphery lower part of a product package.
|
| No. 6044632 | SSK CORPORATION | 
The trademark consists of a figure attached to the left side of a shoe.
|
| No. 6103554 | ITOCHU Corporation | 
The trademark consists of the alphabetical letters “CONVERSE”, “Chuck Taylor”, and “ALL STAR”, a star-shaped figure, and a figure consisting of the alphabetical letter “R” enclosed in a circle, and which are attached to the side surface of shoes.
|
| No. 6125626 | Sakura Color Products Corp. | 
The trademark consists of a figure of a striped pattern affixed to the periphery of the penholder of an oil marking pen.
|
| No. 6183484 | Puma SE | 
The trademark consists of a figure affixed to the side of the goods “footwear and boots for sports”
|
【Keywords】Position marks, Article 3, Paragraph 1, Item 6 of the Trademark Act, inherent distinctiveness, general consumers, function, Article 3, Paragraph 2 of the Trademark Act, distinctiveness acquired through use
※ The contents of this article are intended to convey general information only and not to provide any legal advice.
Kei IIDA (Writer)
Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)
Contact information for inquiries: k_iida@nakapat.gr.jp