The use of standard characters for a 'well-known' trademark

The Japanese Patent Office (JPO’s) Trademark Appeal Board has rendered a decision that a trademark application filed by our firm should be registered on the grounds that the applied-for trademark has become well-known among consumers through use by the applicant, based on Trademark Law Article 3(2).

This case relates to an application in which the trademark is the house mark of a famous confectionery company in Hokkaido. The case started in 2008, when the company filed a trademark application with the JPO using the system that allows a trademark using standard characters to be registered.

Trademark registration using standard characters is the system in which an applied-for trademark is registered under the following conditions: (i) a trademark to be filed for registration is formed by characters only; (ii) the applicant does not file a special request regarding the appearance of the applied-for trademark; and (iii) the applied-for trademark can be registered using the characters with a typeface that was designated and publicised in advance by the JPO commissioner.

Under this system a word mark can be registered without having to include a specific typeface of the characters such as Gothic or Ming-style type.

However, the initial application (Japanese Trademark Application No. 2008-9879), in which the trademark ‘Hori’ (formed by standard characters) was filed, was rejected by the JPO on the grounds that the applied-for trademark is composed of nothing more than the letters Hori, which represents in Roman letters the common Japanese family name ‘....’ written in normal characters, and therefore, Trademark Law Article 3(1)(iv) is applicable to the applied-for trademark.

The applicant filed an appeal. The JPO’s Appeal Board supported the examiner’s decision (Trial No. 2009-4733) even though it accepted our argument (to which Trademark Law Article 3[2] is to be applied) that the applied-for trademark has become well-known due to the use of the mark by the applicant.

“WE CONSIDERED THAT THE EXAMINER’S DECISION WAS INCORRECT BECAUSE, DESPITE THE FACT THAT THE NEW APPLICATION WAS FILED IN ACCORDANCE WITH THE BOARD’S PREVIOUS RULING, THE EXAMINER IGNORED IT.”

The reason the board supported the original decision was as follows: the applied-for trademark formed by standard characters is different from the trademark the applicant actually uses, in typeface and appearance, and therefore the applied-for trademark is not the same as the trademark that is used. In other words, the board does not acknowledge that the applied-for trademark is the same as the used trademark, which is the requirement for applying Trademark Law Article 3(2).

After consultation with our client, we filed another trademark application, in which the applied-for trademark used a bolder Gothic type so as to be the same as the actually used trademark (Japanese Trademark Application No. 2010-14921), and also argued that the applied-for trademark is wellknown due to use by the applicant. However, the examiner did not accept our argument, and again rejected the application.

We considered that the examiner’s decision was incorrect because, despite the fact that the new application was filed in accordance with the board’s previous ruling, the examiner ignored it. We again filed an appeal to cancel the decision (Trial No. 2011-25944), and the Appeal Board at last decided that the applied-for trademark should be registered after we submitted a great deal of evidence to support the claim that the applied-for trademark has become well-known due to use by the applicant.

Reviewing the process that led to final registration of the trademark, we agree that it is necessary to evaluate precisely whether or not an applied-for trademark is the same as a trademark that is actually used, in order to determine whether the applied-for trademark has become well-known through use. However, throughout this process, we have felt that the JPO’s decisions contradict the rules of registering a trademark using standard characters.

In view of the fact that many rulings that put importance on the ‘actual state of transaction of goods’ covered by a trademark have been issued when determining similarities between trademarks, we have to say that the reason for the existence of the ‘standard characters’ system has been undermined and its merits have been diminished.