Does use of a trade mark within the UK constitute valid use within the EU to evidence enhanced distinctiveness of an EU trade mark?
The judgement of the Shopify vs Shoppi case has important implications for UK trade mark owners.
A revised trade mark law due to be implemented in Japan (probably on 1 April 2015) will expand the types of trade marks which can be registered in Japan.
It will be possible to register various different types of trade marks such as “colour per se”, “sound”, “motion”, “hologram” and “position” marks, similar to the position in Europe.
As is the case in Europe applications to register some of the these special trade marks will likely be rejected unless it can be proved that they have acquired distinctiveness through use.
The ability to register various special trade marks was introduced in the UK by the Trade Marks Act 1994. Since then a number of such marks have been registered, famously including the colour purple for chocolate by Cadbury, and a shade of green for petrol stations by BP. We have assisted a number of clients with these types of marks, including registering a sound as a trade mark for fruit machines.
Businesses which have already registered special trade marks in the UK or Europe should now consider seeking corresponding protection in Japan.
If you have any questions relating to trade marks in Japan or any other IP related issue please click here to complete our contact form and one of our advisors will get back to you.