Foreign trademark trivia

2024.06.04

table of contents

Part 1: About the “sound” trademark

Currently, in Japan, where we live, things that are ``always appealing to the eye'' such as letters, figures, and three-dimensional shapes are protected as trademarks. In other words, things like "sound" and "smell" are not protected as trademarks because they do not have visual appeal.

It also needs to be "static". In other words, "moving" items are not protected as trademarks.

Looking overseas, major countries and organizations (OHIM) have already granted protection to trademarks that are not currently protected in Japan. See the table below.

Reference addresshttps://www.jpo.go.jp/shiryou/toushin/shingikai/pdf/t_mark_sinsakijunwg_01/sankou2.pdf

Note: Currently, the Japanese Patent Office has newly added "sound," "color alone," "movement," "hologram," and "position" as trademark protection targets from the perspective of harmonizing the international trademark system. Final adjustments are being made to protect it as a trademark.

Therefore, in Part 1, I would like to briefly introduce how these trademarks that will be introduced in the future are protected overseas. In the first part, I will first introduce "sound".

Reference addresshttps://www.jpo.go.jp/shiryou/toushin/shingikai/pdf/t_mark_sinsakijunwg_01/sankou2.pdf

Info: On the USPTO (United States Patent and Trademark Office) website, you can actually listen to examples of registered trademarks for "sound". Please visit the site below and have a listen.
address:http://www.uspto.gov/trademarks/soundmarks/

The above trademark is registered as a sound trademark at OHIM. When you listen to this music score as an actual "sound", you can tell that it is Tetris. When applying for a sound trademark, the musical score serves as the trademark sample. Please note that when filing electronically, it is possible to submit an audio file.

Part 2 EU trademarks and UK trademarks

EU and UK applications

When filing a trademark application in an EU member country, it is possible to file a trademark application in each EU member country, but by filing an application for a European Union Trademark (EUTM), it is possible to obtain trademark rights for all EU member countries. .

On the other hand, the UK left the EU on January 2020, 1, so even if you obtain a European Union trademark, the UK will not be included. Therefore, please note that if you wish to register a trademark in the UK as well as the EU, you will need to file a UK application separately from the EU application.

	European Union	英国
madpro	○	○
international classification	○	○
Multi-class application	○	○
Relative registration requirements	No review	No review
Type of trademark	Characters, figures, symbols, three-dimensional shapes, single colors, color combinations, sounds, movements, holograms, positions, etc.	Characters, figures, symbols, three-dimensional shapes, single colors, color combinations, sounds, movements, holograms, positions, etc.
Protection target	Product trademarks, service trademarks, collective trademarks	Product trademarks, service trademarks, collective trademarks, series trademarks, certification trademarks
Principles of entitlement	First-to-file principle	First-to-file principle
Application language	EU official language	English
Duration	10 years from application date *Renewable	10 years from application date *Renewable
Non-use cancellation period	5	5
Opposition period	March from the application publication date	March from the application publication date

*In both the European Union and the UK, an examination is conducted for absolute reasons for refusal (distinctiveness, etc.), but not for relative reasons for refusal (prior trademarks), and prior trademarks will not be examined unless an opposition is filed. .

*For details on European Union trademarks, please see country-specific content "EUPlease refer to ``.

Direct application and MadPro application

When filing a trademark application in the EU and the UK, it is possible to file a trademark application (directly) with the EUIPO (European Union Intellectual Property Office) and UKIPO (United Kingdom Intellectual Property Office) through a local agent; Since both countries are members of the Madrid Protocol (MadPro), it is possible to file a joint application by specifying the EU and UK in the MadPro application.

In addition, it is possible to additionally designate a designated country (subsequent designation) after filing a MadPro application, so for example, it is possible to designate the EU at the time of filing and later designate the UK later if necessary.

*For details on direct application and MadPro application, please seeTo obtain trademark rights overseasPlease refer to ``.

Transitional measures related to the UK's withdrawal from the EU

European Union trademarks that have been registered and are still in effect at the end of the transition period for the UK's withdrawal from the EU (2020 December 12) will automatically have an equivalent UK trademark created and granted.

However, when the renewal deadline comes after the transition period has passed, even if you renew your European Union trademark, the UK will not be included in the European Union trademark after the renewal deadline. Therefore, if you wish to renew your UK trademark, please note that you will need to complete the UK trademark renewal procedure separately from the EU trademark renewal procedure.

Additionally, for European Union trademarks that are pending at the end of the transition period (December 2020, 12), it will be possible to re-apply in the UK by claiming the European filing date within September 31, 2021. . Therefore, if you wish to obtain trademark rights in the UK, please note that you will need to reapply for the UK trademark as described above.

Part 3 Trademark consisting only of colors

At the Tokyo 2020 Olympic and Paralympic Games, the flag of Sierra Leone became a hot topic because it looked exactly like the logo of Family Mart, a major convenience store. If you compare them, you'll see that they have the green, white, and blue coloring that we often see around town.
　Many people may have thought of FamilyMart from this three-color scheme, but FamilyMart Co., Ltd. has registered this color as a color trademark as a sign to recognize a specific company. This is a successful example of a brand strategy that allows people to recognize the store as ``FamilyMart'' just by using color.

sierra leone flag

Color trademark: Registration No. 6085064/Right holder: FamilyMart Co., Ltd.

However, since new types of trademarks such as "trademarks consisting only of color" became registrable due to the 2015 legal amendment, as of the end of August 2021, only 8 have been registered in Japan. This is just a matter.
　Moreover, most of the trademarks consist of a "combination of colors," and there are no examples of single-color registrations yet. Although it is not limited to Japan, there is a tendency for it to be difficult to distinguish one color from another when using only a single color, and most products have acquired the ability to distinguish through use.

Overseas, it was possible to register color trademarks earlier than in Japan, so over several hundred colors have already been registered, as well as many single colors. In the United States, trademarks are defined as being protected as long as they serve an identifying function in relation to goods or services, rather than as a separate type of protection such as a trademark consisting only of color. (It is said that trademarks consisting only of a single color are inherently non-distinctive), and the number of registrations seems to have increased following the Supreme Court's ruling in 1995.

Below are examples of overseas registration and usage of trademarks consisting only of colors. Some of them are also familiar in Japan. Some Japanese companies file and register overseas before filing and registering in Japan.