Our AI-generated logo was rejected for trademark registration. Can AI-generated works not be trademarked?

Question

阿部国際法律事務所 · Accepted Answer

Being AI-generated is not a ground for refusal. The likely causes are lack of distinctiveness (Art. 3(1)) or similarity to an earlier mark (Art. 4(1)(xi)); you can respond with a written opinion or amendment.

A trademark application will not be refused merely because the mark was generated by AI. The registration requirements in Japan's Trademark Act (Articles 3 and 4) say nothing about who created a mark or how. If your application was refused, the likely reasons are that the examiner found the design not distinctive enough (Art. 3(1)) or similar to an earlier registered mark owned by someone else (Art. 4(1)(xi)). When you receive a notice of reasons for refusal, you can respond within the designated period with a written opinion or an amendment (Arts. 15-2 and 68-40).

When this becomes an issue

- You applied to register a logo for a new service created with an image-generation AI, and received a notice of reasons for refusal from the Japan Patent Office (JPO).
- You later discovered that a logo you commissioned from a design agency had actually been generated by AI.
- You started using an AI-generated logo on products, and a business partner pointed out that another company uses a similar one.
- You want to register a logo ahead of overseas expansion but are unsure how the AI service's terms of use treat the rights.

1. Being AI-generated is not itself a ground for refusal

Under the Trademark Act, a "trademark" is a sign perceptible to people, such as characters, figures, symbols, three-dimensional shapes, colours or sounds, that is used in the course of trade in connection with goods or services (Art. 2(1)). The definition contains no requirement about who made the mark or how it was made.

An examiner may refuse registration only where the application falls within the grounds in Article 3, Article 4(1) and other listed provisions (Art. 15(i)). The mere fact that a mark was generated by AI is therefore not a reason for refusal. The notice of reasons for refusal states which provision the examiner relied on, and that is the place to start.

2. Common ground for refusal (1): lack of distinctiveness (Art. 3(1))

A trademark is a badge that distinguishes your goods or services from those of others, so a mark that cannot do this cannot be registered. Article 3(1) excludes marks such as the following.

- Marks consisting solely of the common name of the goods or services, shown in a common manner (item i)
- Marks customarily used for the goods or services (item ii)
- Marks consisting solely of the place of origin, quality, efficacy, use or similar characteristics, shown in a common manner (item iii)
- Marks consisting solely of a common surname or name, shown in a common manner (item iv)
- Marks consisting solely of a very simple and commonplace sign (item v)
- Any other mark by which consumers cannot recognise whose goods or services they are (item vi)

If you ask an AI for "a simple logo" or "an icon that looks like X", it may produce familiar shapes or a picture that simply depicts the product's features. Such designs tend to attract objections under items iii, v and vi. Even so, a mark falling under items iii to v can be registered if, as a result of use, consumers have come to recognise whose goods or services it indicates (Art. 3(2)).

3. Common ground for refusal (2): similarity to another person's mark (Art. 4(1))

A mark cannot be registered if it is identical or similar to another person's registered mark from an earlier application, and the designated goods or services are identical or similar (Art. 4(1)(xi)). Because AI generates images based on large volumes of existing material, it can produce designs that resemble existing logos. Searching for similar registered marks before filing, for example on J-PlatPat (the Japan Platform for Patent Information), is important.

Even where an earlier registered mark exists, item xi does not apply if its owner has consented and there is no likelihood of confusion as to the source of the goods or services (Art. 4(4)).

Applications may also be refused on grounds such as the following.

- Marks likely to harm public order or morality (Art. 4(1)(vii))
- Marks containing another person's portrait or certain names of other persons (item viii)
- Marks identical or similar to a mark widely known as indicating another person's goods or services, used for identical or similar goods or services (item x)
- Marks likely to cause confusion with another person's goods or services (item xv)
- Marks identical or similar to another person's mark that is widely known in Japan or abroad, used for an unfair purpose (item xix)

4. Responding to a notice of reasons for refusal

Before deciding to refuse an application, the examiner must notify the applicant of the reasons and give an opportunity to submit a written opinion within a reasonable designated period (Art. 15-2). Within that period you can take steps such as these.

- Written opinion: Explain why the mark is distinctive, or why it is not similar to the cited mark.
- Amendment: Remove the reason for refusal, for example by narrowing the designated goods or services (Art. 68-40(1)).
- Obtaining consent: If the owner of the earlier registered mark consents, registration may be possible under Article 4(4).

If the application is still refused after a written opinion or amendment, you may request an appeal against the decision of refusal within three months of service of a copy of the decision (Art. 44(1)).

An amendment changing the design of the mark will be dismissed if it changes the gist of the application (Art. 16-2(1)). If you want to change the design, you will need to file a new application.

5. A remaining issue even after registration: copyright

Registration alone does not guarantee that you can use the logo without problems.

The document "AI to Chosakuken ni Kansuru Kangaekata ni tsuite" (Approach to AI and Copyright), published on 15 March 2024 by the Legal System Subcommittee of the Copyright Subdivision of the Council for Cultural Affairs (Agency for Cultural Affairs), states that whether an AI-generated output is a copyright work is decided according to the specific circumstances of each case. AI itself cannot be an author; where an output is found to be a work, the person who created it using the AI is the author. The document states that it is not legally binding.

Under the Copyright Act, a "work" is a creative expression of thoughts or sentiments (Art. 2(1)(i)). A logo generated from a simple prompt may not qualify as a work. In that case, it will be difficult to use copyright to stop another company from using a similar design.

Conversely, problems arise if a generated logo resembles an existing work by someone else. The same document states that AI-generated output can infringe copyright if similarity to, and reliance on, an existing work are found. The Trademark Act also provides that where use of a registered mark conflicts with another person's copyright that arose before the filing date, the owner may not use the mark to the extent of the conflict (Art. 29).

6. Check the AI service's terms of use

Each image-generation service sets out in its terms of use who owns the output, whether commercial use is allowed, and the scope of the user's responsibility. Free and paid plans may be treated differently. Saving the terms that applied when you generated the logo will help if you need to check them later.

7. Contracts when outsourcing the design

When commissioning a logo from an outside designer, it is worth confirming in advance whether AI will be used and recording this in the contract. If AI will be used, check which service and whether its terms of use permit commercial use.

It also helps to agree who will own the copyright in the deliverables, how far the designer warrants that the work does not infringe third-party rights, and who will deal with any problems that arise. Asking the designer how the logo was created before you file a trademark application is also useful.

Steps you can take now

- Check which provision the notice of reasons for refusal cites (which item of Art. 3(1) or Art. 4(1)) and the deadline for responding.
- Check the registration details of any cited earlier mark (design, designated goods and services) and list the differences from your logo.
- Record and keep the name of the AI service, the generation date, the prompts used and the terms of use in force at that time.
- If the logo was modified by hand, keep a record of the changes and the files.
- When creating a new logo, search for similar marks, for example on J-PlatPat, before filing.
- If you outsourced the design, confirm in the contract whether AI was used and who owns the rights.

When to consult a lawyer

- You have received a notice of reasons for refusal and cannot judge whether a written opinion will succeed.
- Your application has been refused and you are considering an appeal.
- You have been told that your logo resembles another company's mark or copyright work, or you have received a warning letter.
- You plan to use an AI-generated logo widely, including overseas.
- You are unsure how to deal with AI use and ownership of rights in a contract with a design or production company.

Frequently asked questions

Q. Can an AI-generated logo not be registered as a trademark?
It can. The registration requirements in the Trademark Act contain no rule about how a mark was made (Arts. 2(1), 3 and 4). If the mark is distinctive and not similar to another person's mark, it may be registered.

Q. By when must I respond to a notice of reasons for refusal?
Submit your written opinion or amendment within the designated period stated in the notice (Trademark Act, Art. 15-2). Check the period in the notice itself.

Q. If my application is refused, is that the end?
You may request an appeal against the decision of refusal within three months of service of a copy of the decision (Trademark Act, Art. 44(1)).

Q. Once registered, can I use the AI-generated logo freely?
Not necessarily. If the logo resembles someone else's work and conflicts with their copyright, the law provides that even a registered mark may not be used to the extent of the conflict (Trademark Act, Art. 29).

Q. Is an AI-generated logo protected by copyright?
It depends on the circumstances. The Agency for Cultural Affairs document takes the view that whether an AI output is a work is decided case by case, taking into account matters such as the content of the human instructions and any additions or modifications made by a person.

Q.Our AI-generated logo was rejected for trademark registration. Can AI-generated works not be trademarked?

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