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2013.11.05 WARNING! Scam e-mails masquerading as FUJIMarks Japan

Various types of scam emails purporting to be from or associated with FUJIMarks Japan have been sent on November 4, 2013.

    Please do not send back to such fraudulent emails.

These emails are in no way associated with FUJIMarks Japan or with its staff members. We conduct an investigation about why these emails have been sent and also act for taking appropriate measures to prevent this from happing again.

If you have any doubts about the authenticity of an email purportedly from or referring to FUJIMarks Japan, please email us. support@fujimarks.jp

Thank you for your cooperation and attention.

The message of the scam email is as follows:


Subject: Legal Matter

My name is Tak Kotani The president of Fujimarks Japan law firm.

I have a business proposal which is highly confidential and will be of great benefit for me and you, please let me know if you are interested I will forward you my proposal.


Yours sincerely,
Mr. Tak Kotani
President
________________________________________________________
Mr. Tak Kotani
Direct email: Tak.Kotani@lawyer.com
Address:Yurakucho Bldg., 4th Fl,1-10-1 Yurakucho,
Chiyoda-ku,Tokyo 100-0006, JAPAN
Tel: +81-3-5293-7981
http://www.fujimarks.jp

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2012.03.23  NEW DESCRIPTION “DIETARY SUPPLEMENTS” CAME TO BE ACCEPTABLE; Revision of Japanese Trademark Practices from January 1, 2012

In accordance with the adoption of the 10th edition of the Nice Classification, there are several significant changes regarding the Japanese Trademark practices. The revised practices have come into effect on January 1, 2012 and been applied to the applications which are filed on and after the said date.

The most significant change is that a new Descriptions of Goods, “Supplements (Dietary and nutritional supplements)” came to be acceptable and placed in Class 5.

Before the revision, so-called "Dietary supplements" were regarded as a kind of processed food and it was necessary to specify ingredients and forms in drafting the Descriptions of Goods for filing a new trademark application (e.g. “Processed food not for medical purposes containing soybeans (in the form of liquids and solids)”. Since “Supplements” as a processed food were placed in class 29 or class 30 depending on their ingredients, applicants had often to pay official fee for 2 classes.

After the revision, the expression “Supplements” came to be acceptable and “Supplements” belongs to class 5 regardless of ingredients. The revision is advantageous for the applicants, because drafting the Descriptions of Good came to be easier and it came to be possible to claim “Supplements” by paying official fee for one class.

Although the Japanese Patent office (JPO) announced that "Supplements" include various forms such as tablets, capsules, soft gels, or liquid, the accurate definition of “Dietary supplements” has not been made clear yet. Therefore, we have to await further information on the definition from the JPO.

If you have any questions, please do not hesitate contact us.

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2009.07.07  Color Trademarks
  ・・・ The word mark "BLACK" is a registered trademark ! ?

crayon

In Japan, word trademarks such as RED, BLUE and GREEN are rejected due to lack of distinctiveness because they merely indicate colors of goods or their containers or labels. In addition, these words indicating colors in trademarks are disregarded when examining similarity of trademarks.

The word "COLOR" also means that the goods are colored and "TONE" is understood as "color tone". "GOLD" means higher in rank as well as a kind of colors. "LEMON" also indicates "lemon color" as well as a lemon fruit. "VIOLET" is a color as well as a flower and "WINE" may be understood as a wine color.

However, recently we can see some Trial Decisions that word trademarks consisting only of the words indicating colors are decided as distinctive and registrable in relation to specific goods or services as follows.

Trademarks Class - Good/Services Trial Nos.
BLACK(Japanese) 9 (Game programs) 2008-1174
BLACK 33 (Japanese liquor) 2001-14300
BLUE 10 (Medical machines) 2006-28211
GOLD 45 (Providing fashion information) 2005-8446
GOLD 41 (Golf tournaments) 2005-18633
SILVER 34 (Tobaccos) 2004-20428
GREEN MIX 19 (Architectural materials) 2004-13245
SUPER COLOR 3 (Cosmetics) H11-21021

Thus, it is very difficult to say even about word marks whether they are distinctive or not. Now, it is being considered under the expected amendment of the Japanese Trademark Law as to whether colors themselves should be registered as a new kind of trademarks or not. It will be difficult to reproduce the identical color as applied-for, registered and being used. We do not know how to examine distinctiveness of color marks and their similarities. We will take a look at the amendment of the Japanese TM Law.

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2009.04.08  Chinese Trademarks

Scenery of ChinaWith the fast-growing economy and increasing foreign investment, the number of trademark filings has been mounting for recent years in China and it was announced that the number of filings in 2008 was closed to 700,000. The exploding number of filing trademarks results in severe delay in trademark examination. The examination procedure has prolonged to three years or even more.

To shorten the term of examination, the State Administration for Industry and Commerce recruited 300 new examiners of the Chinese Trademark Office and 100 new re-examiners of Trademark Review and Adjudication Board in March of 2008.

Therefore now in Chinese Trademark Office, there are about 400 examiners and there are 12 sections in charge of examination of trademark applications, and one section in charge of receiving all kinds of filing and taking a formal examination, and one section of renewal and recordal of change and trademark license, 3 sections in charge of opposition cases.

In addition, the revision draft of Chinese Trademark Law is undergoing. While this draft is still a work in progress, it is nearing the final form and includes notable changes mentioned below.

  1. 1. The Trademark Office would no more reject new trademarks with relative grounds for refusal. If no absolute grounds for refusal are found, the new trademarks will be published in the Trademark Gazette for opposition purposes.
  2. 2. The opposition period is extended from the original 3 months to 4 months. In case that no opposition is filed, new trademarks will be registered for ten years.

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2009.02.26 "SHIGENOBU OKUMA"
    ・・・ The historical personages can be registered as trade marks ! ?

It is in the news that an application (2008-52356) for trademark "SHIGENOBU OKUMA" (politician) who is the founder of Waseda University has been filed by others and that Waseda University is repulsing it. Really, can the names of historical persons like "SHIGENOBU OKUMA" be registered as a trade mark ?

Needless to say, it is examined based on the Trade Mark Law, and because the examiner cannot reject the application as long as it doesn't correspond to Article 3 or Article 4 of Trademark Law that provides about the reasons for rejection, the trademark is registered.

Trademark Applications for the historical persons’ names are subject to Article 4-1-7 of the Law that provides public order and morals as reason for rejection. In the past, the trademarks such as "Da Vinci" (No. 4276671) and "baby Shakespeare" (No. 4721984) were registered.

However, as a commonsense doubt, it would be problem if the trademark, for instance, for "Shakespeare Cakes" is registered and is exclusively used by a private company. When such well known names are used for the goods as a trademark, it will give a kind or reliance to the goods and it will be easy to advertise them to consumers. In a word, such a trademark takes free ride on the achievement at the deceased.

However, the trademarks of the historical persons’ names recently came to be applied for frequently, and a lot of Trial Decisions that did not admit registration have been rendered against the trademarks such as "CHAPLINE" (Trial No.2000-16177), "GAUDI" (Trial No. 2000-9512), "KENNEDY" (Trial No. 2002-15736) and "Picasso World" (Trial No. 2003-90522).

Therefore, the Japanese Patent Office is now considering clearly stating in the Trademark Examination Standard the criteria as to whether trademarks for the historical persons’ names are registered or not.

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2009.02.20 Is "BIZ" a mark of the international organization?

Article 4-1-3 of the Trademark Law prohibits registration of a trademark which is identical or similar to a mark that displays the international organization, and which is indicated by the Minister of Economy, Trade and Industry. "BIZ" was also indicated in 1994 for a German abbreviation of the Bank for International Settlements that is the international cooperation organization for the monetary stability.

According to this Article, an application for the trademark "BIZ" that specifies goods in Class 6 and other classes was rejected (Trial No.2000-1321).

The trademark "BIZPOST (Device)" in Class 16 filed by the Japan Post in 2002 had been rejected at the first instance due to Article 4-1-3 since this article is also applied to a trademark which is similar to the mark of the international organization. However, this trademark was finally registered under the Trial procedures because the trademark is unified and inseparable and therefore, it is not similar to "BIZ" (Trial No. 2003-13863).

However, the word that we immediately imagine when hearing "BIZ" is "COOL BIZ" started in 2005 for the purpose as for environmental measures. Because "BIZ" in "COOL BIZ" is an abbreviation of "Business", it is a very convenient word as a trademark. Therefore, a lot of trademarks including the word of "BIZ" came to be applied for.

A trademark including the word of "BIZ" filed through our firm in Class 36 had been also rejected at the first instance due to Article 4-1-3. However, we submitted a Note of Argument explaining the legislative intent of Article 4-1-3 and insisting that the word "BIZ" in the applied-for trademark means "Business" and it does not recollect the Bank for International Settlements. As the result, our clients’ trademark was registered.

Now, many trademarks including the word "BIZ" are registered. This is a topic that was caused since the fixed reason for rejection of indication of the international organization and the word that arose in the flow in the age become the same by chance.

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2009.02.20 Blu-ray Disc vs. HD DVD

Disk Image The new standard of DVD was decided to "Blu-ray Disc (BD)" by Sony, Panasonic, and Sharp after the standard duel was continued with "HD DVD" that Toshiba had initiated.

As for the reason decided to BD, it has been enumerated that the capacity of BD is larger, the majority of the appliance maker attached to the BD side, and BD soft increased. We want to approach this duel from the naming respect.

Which first feels good impression when we hear both names ? Because "Blu-ray Disc" means "Disk of blue light", it is very comprehensible, and gives feeling to which a cold, transparent impression of word "Blue" is technically refined.

On the other hand, while "HD" in "HD DVD" is abbreviation of "High-Definition", "HD" is much known as for the meaning of "Hard disk" and "HD DVD" is understood as "Hard Disk DVD" as a whole. Therefore, there is no impression that attracts the person in "HD DVD".

Therefore, "Blu-ray disc" is better than "HD DVD" even from the viewpoint of the naming.

Next, when thinking about the possibility of the trademark registration of these words, "HD DVD" are not registrable due to lack of distinctiveness because "HD" means "High Definition" or "Hard Disk" and "DVD" that is the generic term.

On the other hand, "Blue Ray Disc" is not also registrable as it is because it means "Disk of blue light". Then, the BD side thought. It did because the last "e" of "Blue" decided to be taken, and to write as "Blu-Ray". "Blu-Ray" can receive the trademark registration as a coined word that is special and not significant in Japan because it doesn't mean "Blue" in "Blu".

Of course, "Blu" suggests "Blue". However, a merely suggestive trademark can be registered while a descriptive trademark can not be registered.

Because trademark "Bluray Disc" was originally registered by Sony under No.4622587, trademark "BLU-RAY DISC" and its logo mark were registered in the name of Sony under No.4668108 and No.4929075, and after that, they were transferred to "Blu-ray Disc Association" of the United States that is the standard decision group.

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