2018.12.16

Vol.12 (MUSIC APARTMENT)

H28 (gyo-ke) 10191

(The decision by IP High Court against the decision of valid by the invalidation trial)

Subject mark 

音楽マンション 

(This is literally translated into “music mansion” and but should be translated into “music apartment” or “music flat”)

Class 36

management of buildings; rental of buildings, etc.

1. Conclusion

The subject mark should not be invalidated in terms of distinctiveness

2. Summary 

The subject mark registered in 2014 was judged to have distinctiveness even though the same mark for the same services the plaintiff applied for had been judged to lack distinctiveness in 2003. The plaintiff asserted that the mark should be invalidated because that the mark should be generally used as a descriptive term and the distinctiveness was denied in the previous examination. The JPO and IP High Court has not accepted this assertion, the judge pointing out that most of the proof of use are related to the apartments plaintiff constructed and thus the mark should not be generally used, and that the plaintiff should have filed an Appeal against the decision of rejection.

3. Comments

It is a pity for the plaintiff. What the judge points out accords to the trademark law, but this is not realistic because filing an Appeal generally costs a lot and takes a long time. I assume that many applicants believe if a trademark is rejected due to distinctiveness after filing Arguments (not filing an Appeal), it means they are free to use the trademark.

Based on this case, it is better to file an Appeal against a decision of rejection due to distinctiveness. Alternatively, we should consider filing a new application for the combination mark of a rejected mark (hereinafter referred as “mark X”) and a distinctive  mark in order to securely use the mark. Such a combination mark can be cited against mark X in a later-filed application by third parties as in Appeal. Nos. 2017-16236 and 2010-8765. One of them  is as follows.

*The part ”KIMURAYA” is controversial in terms of distinctiveness.

In this way, while you can prevent mark X filed by third parties from being registered, you can challenge for the registration of mark X after using it for a long time.

On a different note, when I discussed this case with a Patent and Trademark attorney, I heard that the plaintiff is now using the mark “MUSISION” and the naming is better than the subject mark. I agree to this opinion. Although the court judged the subject mark to have distinctiveness, consumers may understand the mark as a descriptive mark in real life and the mark seems to be easier to become a generic mark.The mark “MUSISION” would be more creative and easy to remember for Japanese people.