Trademarks that consist solely  of signs that commonly indicate characteristics such as the place of production or shape of goods are considered non-distinctive under Article 3(1)(iii) of the Japanese Trademark Act and are generally not registrable. This article will review two court decisions where the Intellectual Property High Court (“Court”) had differing judgments on the distinctiveness of trademarks that include geographic indications, with reference to the examination standards of the Japan Patent Office (“JPO”).

Case 1

April 11, 2024, IP High Court, Third Division, Case No. Reiwa 5 [2023] (Gyo-Ke) 10115

Trademark: “Nepal Tiger” (standard characters)

Trademark Application No. 2021-102626

Conclusion: Appeal upheld; the Court decided that the trademark was distinctive.

Case 2

April 17, 2024, IP High Court, Second Division, Case No. Reiwa 5 [2023] (Gyo-Ke) 10114

Trademark: “Tibetan Tiger” (standard characters)

Trademark Application No. 2021-102625

Conclusion: Appeal dismissed; the Court decided that the trademark was non-distinctive.

In both cases, the applications were filed in Class 27: “carpets, rugs, mats, yoga mats, textile wall hangings, wall hangings (excluding those made of textiles),” and were initially rejected. The rejections were contested in appeals before the JPO Appeal Board, and eventually before the Court.

Review of Case 1

When determining the distinctiveness of the “Nepal Tiger” trademark, the following facts were found by the Court:

1. Carpets are produced in Nepal.
2. There are multiple websites indicate that people who migrated from Tibet or Tibetan refugees are involved in carpet production in Nepal.
3. There are multiple websites that refer to carpets made in Nepal as “Tibetan carpets” or similar names.
4. There are multiple websites that refer to carpets with tiger designs or in the shape of a tiger as “Tiger.”
5. There are multiple websites that refer to carpets or rugs in the shape of a tiger as “Tibetan Tiger Rug.”
6. There are multiple websites that introduce carpets made in Nepal with tiger designs.

Since there were no references to carpets or rugs as “Nepal Tiger” in the submitted evidence, the Court found that there was no actual use of “Nepal Tiger” to indicate the characteristics of the goods. The Court also found that the trademark “Nepal Tiger” was recognized as a coined term combining the normally uncombined words “Nepal” and “Tiger.” The Court held that the applied trademark is not recognized as indicating the origin, place of sale, or quality of the goods by traders and consumers in connection with the designated goods. Furthermore, the applied trademark also cannot be said to be desired for use by anyone as a necessary and appropriate indication in trade. Consequently, the Court concluded that the applied trademark is not recognized as a non-distinctive trademark that falls under Article 3(1)(iii) of the Trademark Act.

Review of Case 2

When determining the distinctiveness of the “Tibetan Tiger” trademark, the following facts were recognized:

1. In the carpet field, there are rugs shaped like tigers seen from above.
2. These rugs are called “Tibetan Tiger Rugs.”

The “rugs shaped like tigers seen from above”

Image Cited from the website of IP High Court.

Considering that “rugs” is a generic term, the phrase “Tibetan Tiger” directly indicates the nature of this specific type of rug. This led to the recognition that the trademark “Tibetan Tiger” consists solely of signs indicating the characteristics of a product which are “rugs shaped like tigers seen from above”. The applied trademark, in relation to the designated goods, specifically the rug in question, consists solely of signs commonly used to indicate the characteristics of the goods. The Court concluded that the applied trademark should be recognized as a non-distinctive trademark that falls under Article 3(1)(iii) of the Trademark Act.

Comments

The key difference between the judgments in Case 1 and Case 2 is that in Case 1, it was not recognized that “Nepal Tiger” was used by traders and consumers (the “Consumers”) to indicate carpets produced in Nepal with tiger designs. In contrast, in Case 2, it was recognized that the Consumers referred to the specific product, namely rugs shaped like tigers seen from above, as “Tibetan Tiger Rug,” indicating the nature of product.

The Court’s finding of distinctiveness in Case 1 was not solely based on the absence of actual use of “Nepal Tiger” but on a comprehensive evaluation of the facts.. In Case 1, the Court also considered whether it is appropriate to grant exclusive right over the applied trademark.. If the applied trademark had been deemed necessary and appropriate for use by anyone in trade, the Court unlikely have allowed a single owner to monopolize such an indication.

In Case 2, it seems reasonable to consider the trademark as an indication of the characteristics of the goods in respect of carpets and rugs because a specific rug product already exists in the market and is recognized by the name “Tibetan Tiger Rugs”

According to the Trademark Examination Standards of the JPO, it is stipulated that “when a trademark is used for designated goods or services, if traders or consumers generally recognize it as indicating the characteristics of the goods or services, it falls under this provision Article 3(1)(iii)]. General recognition does not require actual use of the trademark to indicate the characteristics of the goods or services. [underline added]” Even if there is no actual use of the applied trademark as an indication of the content of the designated goods, the JPO Examiner may decide that the applied trademark is indistinctive if he or she finds that the Consumers generally recognize the applied trademark as indicating the characteristics of the goods or services when used for designated goods or services. The issue of admissibility of exclusive right over the applied trademark will also be considered in the examination phase. If the Examiner finds that the applied trademark is necessary and appropriate for use by anyone in trade, a notice of refusal will then be issued by the Examiner.