[Article / Trademarks] Current conditions and issues in recent appeal decisions against refusals concerning trademark distinctiveness (Rui Asada and Tomohiko Yamada, Patent, October 2025)
Updated: Oct 9
Article information
Content type: Publication review
Categories: Trademarks
Issues: Distinctiveness / Appeal decision revocation actions
First published on this site: 2026-10-03
Display and classification checked: 2026-10-03
[Article / Trademarks] Current conditions and issues in recent appeal decisions against refusals concerning trademark distinctiveness (Rui Asada and Tomohiko Yamada, Patent, October 2025)
1. Rapid “tightening” of distinctiveness assessment
In appeals against refusals based on Article 3(1) of the Trademark Act (distinctiveness), the proportion overturning refusals and reaching registration has markedly declined. After peaking in 2021, the registration-decision ratio fell sharply from 2022 onward.
2. Changes in methodology: From overall observation to “arbitrary” dissection
There is a clear difference in treatment of composite marks (A+B) before and after 2022.
Earlier approach (through 2021): Where examples of use of the entire mark were scarce or word order was coined, distinctiveness tended to be recognized as a kind of coined term (e.g., “Jun-nama udon” was registered).
Current approach (from 2022): Even without examples of the entire mark's use, each constituent word's meanings are carefully collected and arbitrarily combined to assert that a specific meaning, such as a quality indication, arises (e.g., “Jun-nama Sanuki udon” was refused).
Concern (risk of hindsight): Forcing a meaning by supplementing each word's meaning with related words while keeping the goods or services in mind resembles the “hindsight” prohibited in patent inventive-step assessment.
3. Effects on business and branding
Stricter assessment may dampen corporate brand strategy.
Difficulty protecting suggestive marks: “Proactive naming (suggestive marks)” that evokes product appeal and stimulates demand, such as “Oi Ocha” and “Hobo Kani,” risks widespread refusal.
4. Why correction does not work: The barrier to actions for revocation of appeal decisions
The function of checking stricter appeal practice is insufficient, chiefly because very few revocation actions challenge findings of lack of distinctiveness.
<Survey: Why not litigate?>
Lack of distinctiveness: Refusal does not prevent actual use, although exclusivity is unavailable. Many therefore forgo costly litigation because “there is no problem with use” (about 90% of patent attorneys and 80% of companies).
Similarity: Because conflict with others' rights risks cessation of use, around 50–60% consider or bring litigation following similarity-based refusal.
This creates a structure in which IP High Court review of the appropriateness of distinctiveness assessment is unlikely.
Original article: https://lnkd.in/ggEtnFSF
Original source shown in the LinkedIn preview: https://jpaa-patent.info/patent/viewPdf/4717
Originally posted on LinkedIn: https://www.linkedin.com/feed/update/urn:li:activity:7511583948611776512/
Related articles
Update and correction history
Dated entries are added for corrections, supplements, classification, display, and related-article changes, separately from the first publication date.
2026-10-03: First publication on this site from the LinkedIn original.
Consultation guide by purpose: https://www.takaishihideki.com/en/single-post/consultation-guide-en
Comments