This case illustrates how the Japan Patent Office (JPO) evaluates descriptiveness when a term appears to indicate product quality (e.g., color), but lacks clear and established usage in the relevant industry.
It demonstrates that limited or unclear usage may not be sufficient to support a descriptiveness refusal.
1. Application Details
- Mark: FINE BLACK
- Application No.: Japanese Trademark Application No. 2020-63716
- Designated Goods: Metal materials and steel products in Class 6 (e.g., steel sheets, pipes, processed steel products).
2. Refusal by the JPO Examiner
The application was refused based on:
- Article 3(1)(iii) (descriptive mark)
- Article 4(1)(xvi) (misleading indication)
The examiner reasoned that:
- “FINE” means high quality or superior, and
- “BLACK” means black color
Therefore, the mark “FINE BLACK” was considered to mean:
“high-quality black (color)”
The examiner further pointed out that:
- in the metal industry, the term “fine black” is used to describe high-grade black-colored materials, and
- thus the mark merely indicates the quality or color of the goods.
3. Appeal to the JPO Trial and Appeal Board
An appeal was filed against the refusal.
- Appeal No.: 2021-9181
The appeal challenged whether the expression is actually recognized as a specific color designation in the relevant industry.
4. Decision of the Appeal Board
The JPO Appeal Board reversed the refusal.
The Board acknowledged that:
- the individual words “FINE” and “BLACK” have clear meanings, and
- some limited examples of use exist in the industry.
However, the Board emphasized that:
- such usage is very limited, and
- the term “FINE BLACK” is not widely recognized as a specific color designation.
The Board further noted that:
- the term is not included in standardized color naming systems (e.g., JIS color names), and
- consumers would not clearly understand what specific color “FINE BLACK” refers to.
Accordingly:
- the mark does not directly indicate product quality or characteristics, and
- it does not create a risk of misleading consumers.
5. Outcome
The refusal based on descriptiveness and misleading indication was set aside, and the trademark “FINE BLACK” was allowed to proceed toward registration.
Key Point for Foreign Applicants
This case highlights an important principle in Japanese trademark practice.
1. Limited industry use is insufficient
A few examples of use do not establish that a term is commonly descriptive.
2. Standardization matters
If a term is not recognized in official or common classification systems, it may lack clear meaning.
3. Clear and specific meaning is required
A term must directly and specifically indicate product characteristics to be considered descriptive.
✅ Practical takeaway
In Japan, a trademark may be registrable even if it appears descriptive, where:
- its use in the industry is limited or not widespread, and
- its meaning is not clearly defined or standardized.