JPO decision highlights (Distinctiveness) [from January to June of 2025]
1. A case where distinctiveness of the term “WHITE PEARL” was affirmed
| Appeal No. | Present Trademark | Class |
| Appeal 2024-18979 | “WHITE PEARL” (standard characters) | Class 5 (supplements not containing pearl powder) |
| Summary of Decision The JPO Board of Appeal overturned the refusal under Article 4(1)(xvi) of the Trademark Act. Although “WHITE PEARL” literally means “white pearl,” and pearl powder is sometimes used as an ingredient in supplements, there was no evidence that the term was commonly used to describe product quality in this field. Therefore, the applied-for mark was not misleading as to the quality of the designated goods, and the refusal was rescinded. |
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Comment
- The decision clarifies that even descriptive-sounding terms may be registrable if they are not actually used in the trade to designate product characteristics.
- “WHITE PEARL” was not considered deceptive in relation to supplements without pearl powder, as there was no proof of consumer misunderstanding.
- This case underscores that Article 4(1)(xvi) requires more than a theoretical risk of misdescription—actual likelihood of consumer deception must be shown.
2. A case where distinctiveness of the term “VITAMIN VESICLE” was affirmed
| Appeal No. | Present Trademark | Class |
| Appeal 2024-18976 | “ビタミンバイセル” (“VITAMIN VESICLE” in Katakana) |
Class 3 (soaps, dentifrices, cosmetics, perfumes, incense) |
| Summary of Decision The JPO Board of Appeal overturned the refusal under Articles 3(1)(iii) and 4(1)(xvi) of the Trademark Act. While “vitamin” and “vesicle” each have recognized meanings in the cosmetics field, the coined term “ビタミンバイセル” is not listed in dictionaries, nor was it shown to be commonly used in the trade to describe product characteristics. The Board held that the applied-for mark would be perceived as a coined word, not merely descriptive or misleading, and thus functions as a source identifier. Accordingly, the refusal was rescinded. | ||
Comment
- The Board emphasized that combining descriptive elements does not automatically make the mark descriptive if the coined term as a whole lacks an established meaning.
- No evidence was found that “ビタミンバイセル” (Vitamin Vesicle) was in general use to indicate product quality in the cosmetics field.
- The decision confirms that coined expressions will generally be protected if they are not directly understood by consumers as descriptive of product attributes.
