'Real draught' mark fails descriptive test

The IP High Court has upheld a Japan Patent Office (JPO) trial decision that rejected a trademark application for the mark HONNAMA for 'sparkling malt liquor with beer flavour' in Class 32 of the Nice Classification (Case Hei-18 (Gyo-ke) 10374, March 28 2007).

Asahi Breweries Ltd filed an application with the JPO to register the trademark HONNAMA on December 15 2000.

The JPO examiner issued a notice of rejection on August 28 2003. Asahi filed a petition for a trial hearing of the complaint on October 7 2003. During the trial hearing, Asahi changed the description of the designated goods to 'malt sparkling liquor with beer flavour' falling under Class 32.

On June 30 2006 the JPO issued a trial decision that affirmed the original rejection for the following reasons:

• The trademark at issue consisted of the Kanji characters 'hon' (ie, 'real' in Japanese) and 'nama' (ie, 'draught'), written in white on a shaded background. The trademark did not differ from the commonly used design. The sign 'honnama' is commonly used to indicate goods that contain no preservatives or additives, unpasteurized goods and traditional products using natural raw materials. Therefore, if the trademark applied for were used in relation to sparkling malt liquor with beer flavour produced without pasteurization, it would not distinguish Asahi's goods from those of others. The mark applied for thus fell under Article 3(1), Item 3 of the Trademark Law (127/1959, as amended), which provides that registration cannot be obtained for marks that consist of signs:
  

"indicating in a common way the place of origin or sale, quality, raw material, efficacy, use, quantity, shape (including packaging) or price of the goods, or the method, time of manufacture or use, or the location of provision of services, or the quality, articles used, efficacy, use, quantity, modes or price, or the method or time of provision of services."

• If the mark applied for were used for goods other than sparkling malt liquor with beer flavour produced without pasteurization, it would be liable to be misleading as to the quality of the goods. Therefore, it fell under Article 4(1), Item 16, which provides that trademark registration cannot be obtained "in the case of a trademark which is liable to be misleading as to the quality of the goods or services".
  
  
• Although Asahi's sparkling malt liquor was well known as 'Asahi Honnama', the characters 'hon' and 'nama' themselves were not well known to indicate Asahi's goods. Therefore, the mark did not fall under Article 3(2), which provides that descriptive marks may be registrable if they become well known.
  

Asahi appealed to the IP High Court, which upheld the JPO trial decision. The reasoning of the court was as follows.

First, in view of the evidence submitted by Asahi, the court found that the characters 'hon' and 'nama' are widely used in the food industry and recognized as referring to 'genuine unpasteurized products' with regard to liquor, such as beer or sake. Further, the style of the characters in the trademark applied for was common and presented no special features. Thus, the trademark in question, when used in relation to unpasteurized sparkling malt liquor with beer flavour, did not distinguish the applicant's goods from those of others. Moreover, the court reasoned, it would be inappropriate to allow an entity to monopolize the use of this phrase for the purpose of distinguishing its own goods from those of others. Therefore, the JPO correctly found that the use of the trademark in question in relation to unpasteurized sparkling malt liquor with beer flavour simply described the quality of the goods and thus fell under Article 3(1), Item 3.

Second, the court found that there were almost no cases where Asahi used the word 'honnama' independently from the name Asahi on bottles and packaging, and in pamphlets, catalogues and advertisements. Instead, the court found that the characters 'hon' and 'nama' were used to describe the features of Asahi's product in promotional materials. Therefore, it was reasonable to assume that dealers and consumers with access to Asahi's products or promotional materials would recognize the source of the goods not from the word 'honnama' only, but rather from the phrases 'Asahi Breweries Ltd', 'Asahi beer ' and 'Asahi'. Thus, the part of the trademark that distinguished Asahi's goods from those of others was not 'honnama', but the words 'Asahi' or 'Asahi Honnama'. Therefore, the JPO correctly found that the trademark applied for did not fall under Article 3(2).

However, the court overturned the JPO's finding with regard to Article 4(1), Item 16. The court held that the word 'honnama' is not in the dictionary and is thought to have various meanings. In light of the current use of the word 'nama' in relation to sparkling liquor, it could not be inferred that the mark applied for was used for unpasteurized sparkling malt liquor with beer flavour. Thus, there was no likelihood of misleading consumers as to the quality of the goods, even if the designated goods were not limited to unpasteurized sparkling malt liquor with beer flavour. Therefore, the court ruled, the JPO erred in finding that the description of the designated goods as 'sparkling malt liquor with beer flavour' (instead of unpasteurized sparkling malt liquor with beer flavour) was liable to be misleading as to the quality of the goods.

However, the court affirmed the decision of the JPO as a whole.

Eiichi Fukushima and Takashi Michishita, Asahi Law Offices, Tokyo