Appeal decision report – Ghana was allowed to be registered because it has acquired distinctiveness through use
June 4, 2020
|Appeal number||Rejection 2019-8784（JP Appl. No. 2017-161593）|
|Case summary||Ghana is allowed to be registered because it has acquired distinctiveness through use|
|Date of decision||April 20, 2020|
|Demandant (Applicant)||LOTTE Co., Ltd.|
|Designated Goods and Class(es)||Chocolate in class 30|
1 As for Article 3 (1) (iii)
The applied-for trademark consists of shaded, gold colored alphabetical characters “Ghana” in horizontal, in a common manner.
“Ghana”, widely known as a place of origin of cacao, means a republic in West Africa within the Commonwealth of nations. The letters “Ghana” are commonly used to indicate qualities of goods (a place of origin of raw materials of chocolates, cacao) in relation to chocolates.
Under the circumstances, it is reasonable that traders and consumers would likely consider that the applied-for trademark means solely qualities on the designated goods.
Thus, the applied-for trademark consists solely of a mark indicating qualities of goods, in a common manner, and falls under Article 3 (1) (iii).
2 As for Article 3 (2)
The applicant’s goods have been sold nationwide for more than 50 years, since 1964 to date. It is clear that the goods were sold nationwide at launch and have been sold nationwide to date consecutively. The trademarks in use have been used on the applicant’s goods and the trademarks in use and the applied-for-trademark are considered identical.
Thus, it is possible to say that the applied-for-trademark has been recognized on the applicant’s goods among consumers nationwide through use for more than 50 years.
With the above in mind, it is reasonable to consider that the applied-for-trademark has been recognized as indicating the applicant’s designated goods, chocolates, by consumers.
3 As for Article 4 (1) (xvi)
The applied-for-trademark has acquired distinctiveness through use and is not likely to be interpreted by consumers as describing qualities. Thus, the applied-for-trademark is not likely to mislead consumers as to the qualities of the designated goods.
4 As the above, the applied-for-trademark should be allowed to be registered because it has acquired distinctiveness through use even though it consists solely of a mark indicating qualities of goods, in a common manner, and because it is not likely to mislead consumers about the qualities of the designated goods.
|Comments||Upon appeal, three examiners concluded that the applied-for-trademark has acquired distinctiveness nationwide through use for more than 50 years. At examination stage, the examiner judged that the applied-for-trademark is likely to mislead consumers as to the qualities of goods if it is used on goods other than chocolates made from cacao originating from the country of Ghana.|