JPO decision highlights (Distinctiveness) [from January to June of 2024]
1. A case where distinctiveness of the term “d-ROMs Test” was recognized
| Appeal No. | Present Trademark | Class |
| T2023-15629 | d-ROMs Test (standard characters) | 5 (In vitro diagnostic reagents; medical and veterinary diagnostic reagents) |
| Summary of DecisionThe Board overturned the examiner’s rejection. Although the term “d-ROMs Test” has been used in some cases in the relevant medical field to refer to a specific diagnostic test for oxidative stress in blood, the evidence shows such use is almost entirely associated with the applicant’s own products. There was no general use of the term as a common name or a description of the product’s quality. Therefore, the trademark functions as a source identifier and is registrable. | ||
Comment
- The Board confirmed that “d-ROMs Test” is not a generic term in the relevant industry.
- Even when the trademark has already been used widely, the trademark is still allowable if the applicant proves that such wide use are attributable to the applicant.
2. A case where distinctiveness of the term “ETHICAL PRO USE” was not recognized
| Appeal No. | Present Trademark | Class |
| T2023-13711 | ETHICAL PRO USE (standard characters) | 16, 17, 19 (Paper, stationery, printed matter, household and industrial adhesive tapes, rubber and plastic materials, construction materials, etc.) |
| Summary of DecisionThe Board dismissed the appeal. The term “ETHICAL PRO USE” is composed of “ETHICAL,” widely recognized as meaning environmentally or socially responsible, and “PRO USE,” which indicates products for professional users. In the relevant industries, these terms are generally used descriptively to indicate the product’s quality or target users. As such, the trademark would be perceived by consumers as indicating the nature or quality of the goods, rather than serving as a source identifier. Therefore, the mark lacks distinctiveness and cannot be registered under Articles 3(1)(iii) and 4(1)(xvi) of the Trademark Act. | ||
Comment
- “ETHICAL” is commonly used to describe environmentally or socially conscious products.
- “PRO USE” is generally understood in the industry to indicate professional-use products.
- The overall mark is perceived as descriptive of the goods’ quality and intended users, not as a distinctive source identifier.
