Trademark Registration for “Sound” in Japan
Takako OKADA

“Sound” became registrable as a new type of trademark in Japan on April 1, 2015, and since then, a total of 367 sound marks have been registered to date (Note: based on the data available in the JPO database “J-Plat Pat” as of October 8, 2024).

In Japan, the following information is necessary to specify the sound mark in a trademark application:

1. Either (i) a musical notation using 5-line staves (if necessary, 1-line staves can also be used), or (ii) a description of the sound by words; and

2. An audio file of the sound in a prescribed format, which is playable on Windows Media Player.

Importantly, item 1. above (the musical notation or the description of the sound by words) is the main representation of the trademark, which means that it cannot be added or amended later by amendment under Japanese practice. If for example there are discrepancies between the musical notation and the sound recorded in the audio file, the audio file can be amended later to match the musical notation, but the musical notation cannot be amended to match the audio file.

It should also be noted that in Japan, trademark applications for sound marks consisting of only sound elements (with no verbal elements) will basically be rejected on the basis that the sounds are non-distinctive. In case an office action is issued for that reason, the applicant will need to establish that the sound has acquired distinctiveness through use in Japan (i.e., that the sound has become well-known as an indication of the applicant’s goods/services in Japan) to obtain registration. So far, as few as 9 sound marks consisting of only sound elements (with no verbal elements) have been registered, and all of them were registered upon successful establishment of acquired distinctiveness.

For sound marks with verbal elements, prior third-party trademarks containing words that represent the verbal elements could be cited as similar marks, so a trademark clearance search for the verbal element could be useful before filing a trademark application for such sound mark.

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