New types of trademark
Protection for new types of trademark
Advertising media, such as audiovisual ads on websites, have become more diversified worldwide due to recent developments in communications technology, and some countries have been adjusting their trademark systems to enable the registration of such ads and other new types of trademark.
At the same time, the demand by companies to use not only conventional trademarks that consist of letters and/or goods, but also various types of non-traditional trademarks, such as colour marks without silhouettes (eg, green as the colour of a roof of an oil company’s petrol station; UK trademark No. 1469512 for BP); sound marks (eg, engine sounds used in a motorcycle company’s ad; motion marks (eg, a mark moving in a special way); hologram marks (eg, US trademark No. 3045251 for American Express); or position marks (eg, a red track-point button arranged at the centre of a computer keyboard; US trademark No. 2363544), is increasing.
Therefore, the subcommittee held discussions about the need to protect the above-mentioned new types of trademark, and the appropriate content of required laws and regulations, such as how to decide the scope of a right, how to determine the filing date, registration requirements, and so on.
Expanding protection for regional collective trademarks
Regional collective trademarks were introduced in Japan on April 1, 2006 to protect brands that are a combination of the name of a region used for special items or traditional crafts that are produced in that region, and goods or services (eg, ‘Tokyo Ginki’ for silverware manufactured in Tokyo registered for the Tokyo Silverware Manufacturers’ Cooperative).
"the subcommittee concluded that it is appropriate that such organisations be added to the list of organisations entitled to obtain regional collective trademark registration."
As of September 30, 2013, 551 regional collective trademarks had been registered in Japan. The present regional collective trademark system allows only regional entities to obtain such registrations. However, considering the fact that regional organisations such as commerce and industry associations, chambers of commerce and industry, and non-profit organisations have recently been supporting regional economies by utilising regional brands, the subcommittee concluded that it is appropriate that such organisations be added to the list of organisations entitled to obtain regional collective trademark registration, so that regional brands used by such organisations can be protected at an early date.
Other jurisdictions’ protection of new types of trademark
Some foreign countries’ trademark systems have been protecting new types of trademark for many years.
In the US, the present trademark law, enacted in 1946, provides that “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration …” (§2 15USC§1052), and in 1950 a sound mark was registered there for the first time.
In the EU and Australia, trademark systems protecting the new types of trademark have been in effect since 1996, and both jurisdictions require that a mark be expressed realistically in order to be registered.
In Korea, the Trademark Law was amended in 2007 to include protection for new types of trademark, such as colour marks, and new types of trademark not perceived visually, such as sound marks and olfactory marks.
Moving marks (eg, CTM 3429909; images showing hands coming together in a specific way) and position marks (eg, CTM 3892015; a red ring arranged at a specific position on writing implements), have been registered as European Community trademarks.
The demands by Japanese companies that their goods or services be protected by such new types of trademark are increasing.
The Trademark Subcommittee’s discussions of possible revisions to Japan’s trademark system seem to reflect those demands.
Hiroshi Hari is a Japanese patent attorney at Kyosei International Patent Office. He can be contacted at: info@kyosei.or.jp
