The Examiner refused the registration of the trademark application for “Nepal Tiger” under Article 3, Paragraph 1, Item 3 and Article 4, Paragraph 1, Item 16 of the Trademark Law in Japan.
Furthermore, the appeal trial Examiners upheld the Examiner’s decision of refusal.
However, the IP High Court in Japan overturned the decision of the appeal trial Examiners.

<Article 3, Paragraph 1, Item 3 of the Trademark Law in Japan >
Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision.

< Article 4, Paragraph 1, Item 16 of the Trademark Law in Japan >
Notwithstanding the preceding Article, no trademark shall be registered, if the trademark is likely to mislead as to the quality of the goods or services.

April 11, 2024

 (the applied mark)

 Nepal Tiger (written in standard characters)

(Applied Mark: JP Appl. No. 2021-102626)

• Carpets and rugs; floor coverings; floor mats; yoga mats; textile wallpaper; wall hangings, not of textile in Class 27.

The designated goods in this case are aimed at manufacturers and sellers of carpets etc., as traders in Japan.  Additionally, the consumers of the designated goods in this case are aimed at general consumers in Japan.
The applied mark consists of “Nepal,” a country name and “Tiger,” an English word referring to an animal.  However, based on available information (e.g. newspaper articles, books, and articles of website content), the aforementioned traders have not used “Nepal Tiger” as a whole in relation to trading the designated goods in this case.
Thus, “Nepal Tiger” should be recognized as a coined word.  Therefore, both the aforementioned traders and consumers are unlikely to perceive “Nepal Tiger” as directly indicating the place of origin, place of sale, or quality of the designated goods.  Additionally, even if the applicant uses “Nepal Tiger” for carpets other than tiger-shaped carpet made in Nepal, it is unlikely to mislead either traders or consumers regarding the quality of the goods or services.
In view of the above, the IP High Court in Japan did not refuse the registration of the trademark application for “Nepal Tiger” under Article 3, Paragraph 1, Item 3 and Article 4, Paragraph 1, Item 16 of the Trademark Law in Japan.

In line with the decision of the IP High Court in Japan, it is likely that the JPO will allow the registration of a trademark application for a word mark consisting of a common word(s) and a country name, proved that the applied mark, as a whole does not directly indicate the quality of the designated goods (services) and does not mislead either traders or consumers about the quality of the designated goods (services), in accordance with the actual market conditions.

Please compare this case with our previous report from August.
https://www.ondatechno.com/en/news/trademark/p1747/.