Episode 22

When a company is trying to build a brand image, it may be considered effective to be able to protect the background pattern on the surface of the product or the background pattern on the wrapping paper as a right.
Regarding this, the Trademark Examination Guidelines of the Japan Patent Office, regarding the application of Article 3, Paragraph 1, Item 6 of the Trademark Act (a trademark that cannot be recognized by consumers as a product or service related to a certain business), which is a requirement for trademark registration, state that "Regarding trademarks consisting of background patterns," "If a trademark is recognized as simply a background pattern because it is composed of figures, etc. that are repeated continuously in a pattern, it will be determined that it falls under this item. However, even if it is recognized as a background pattern, if there are circumstances such as a distinctive form being found in its composition, it will be taken into consideration in determining whether it falls under this item." In other words, background patterns cannot be registered in principle, but if they are particularly distinctive, they may be registered.
In an appeal against a decision of refusal, it was found that a trademark consisting of an ellipse figure with arabesque patterns combined in the center of the ellipse outline, with the pattern part colored gold and the background part colored light green, fell under Article 3, Paragraph 1, Item 6 of the Trademark Law and could not be registered (Appeal Case No. 6195 of 1971).
In response, in a lawsuit to set aside the appeal decision, the court found that the flowers and arabesque patterns that make up the figurative trademark are merely structural elements, and that even if the individual elements are commonplace, it is easily seen that it is possible for the mark to have a distinctive character as a whole through its arrangement, combination, coloring, etc. (Tokyo High Court Case 1974 (Gyo-ke) No. 7, Judgment of September 18, 1974).
In order to register a background pattern on the surface of a product or a background pattern on wrapping paper as a trademark, it is necessary for the pattern to have a distinctive character. Therefore, even if the pattern continues to be used, if another company uses a similar pattern in the meantime, it will not have a distinctive character.
First, the background pattern is registered as a design. Design registration requires novelty (Article 3, Paragraph 1 of the Design Act) and non-ease of creation (Article 3, Paragraph 2). In other words, new background patterns are easier to register. Design rights have a protection period of 25 years from the date of application for design registration (Article 21, Paragraph 1 of the Design Act), so if the design acquires the ability to distinguish its products from others through use during that period, then after the design right expires, the background pattern can be used permanently by registering it as a trademark.