Ex-ante Regulation under the Trademark Act: JPO Examination Practice

When launching a new shochu brand, it is very common to include the character "芋" (Imo/Potato) in the name. However, in trademark practice, there is a specific precaution regarding the "Selection of Designated Goods".

In conclusion, if the trademark contains the character "Imo," filing with the broad category of "Shochu" as the designated good will, in principle, result in a Notice of Reasons for Refusal from the Japan Patent Office (JPO). This is based on Article 4, Paragraph 1, Item 16 of the Trademark Act (Misidentification of Quality). Allowing a trademark containing "Imo" to be used for barley or rice shochu poses a risk that consumers will misidentify the quality of the product.

While there are exceptions where a trademark may be recognized as a specific coined word as a whole—thus removing the risk of misidentification—the standard practice to resolve this refusal is to limit the designated goods to "Imo-jocchu" (Sweet potato-based shochu). To shorten the examination period and suppress unnecessary costs, it is a standard tactic to limit the goods to "Imo-jocchu" from the initial filing.

Ex-post Regulation under the Unfair Competition Prevention Act: Risks of Quality Misidentification

Securing a trademark registration does not mean you can operate your brand without restrictions. In addition to the Trademark Act (ex-ante regulation), the Unfair Competition Prevention Act exists as an ex-post regulation to monitor actual transactions.

Under Article 2, Paragraph 1, Item 22 of the current Unfair Competition Prevention Act, misleading representations regarding a product's quality, raw materials, or place of origin are strictly prohibited as "acts of unfair competition". Even if a trademark containing the word "Imo" is registered, using it on labels for different products, such as barley shochu, could violate this law. This may lead to:

• Injunction claims or claims for damages from competitors.
• Potential criminal penalties.

Protecting Brand Credibility

Modern consumers are highly sensitive to the labeling of origin and raw materials. Therefore, if your trademark contains characters that evoke specific qualities or materials, an IP strategy focused on the following compliance areas is essential:

• Trademark Act: Proactively prevent refusals due to quality misidentification.
• Unfair Competition Prevention Act: Avoid legal troubles in actual commercial transactions.
• Act against Unjustifiable Premiums and Misleading Representations: Avoid administrative actions caused by "misleading representations of excellence" (Yuryo-Gonin) that differ from reality.

The shortest route to protecting brand credibility is to align the "trademark composition" with the "actual product" and to file/operate with appropriate designated goods. At the time of filing, clarify your future usage plans and aim for appropriate protection of your rights.