The protection of 3D trademarks under the Japanese ...soua.jeez.jp/wp/wp-content/uploads/2011/09/The-protection-of-3D... · 3. Definitions of trademarks The Japanese Trademark Act,

The protection of 3D trademarks

under the Japanese Trademark Act

5.9.2011

Kenichi Morita Japanese Patent Attorney

SO-A International Patent Firm

Copyright 2011 SO-A International Patent Firm All Rights Reserved.

Contents

1. Introduction

2. The types of 3D trademarks protected under the Japanese Trademark Act

3. Definitions of trademarks

4. Conditions of 3D trademarks to be granted

5. IP High Court decisions

6. The format of application of a 3D trademark

7. How do you protect the shape of your product under Japanese IP laws ?

8. Discussions


1. Introduction

3D(three-dimensional)trademarks have come under the protection of

the revised trademark Act and many applications of the 3D trademarks

have passed the examination of the JPO to be granted.

But, “pure” 3D trademarks barely passed the examination of the JPO and

the IP high court also ratified the decision of the JPO at the beginning.

As for the “pure” 3D trademark, recently, the IP high court has tended to

dismiss rejection decisions of the Appeal Board of the JPO.

In this paper, several IP high court decisions of the pure 3D trademarks

are introduced from the start and the possibilities for permanent protection

against the shape of your product are suggested.

Copyright 2011 SO-A International Patent Firm All Rights Reserved. 1

2. The types of 3D trademarks protected under the Japanese Trademark Act

Type I (advertisement materials formed in the shape of a 3D trademark)

Registered No. 4157614(figure Peco)

Designated goods confectionery

Designated services provision of foods and drinks etc.

Type II (goods or packages of goods formed in the shape of a 3D trademark with a

2D mark)

Registered No. 4918091(Coca-Cola bottle with a 2D mark)

Designated goods beverages and beer etc.


Type III (goods or packages of goods formed in the shape of a 3D trademark with no

other mark; pure 3D trademark)

Registered No. 5225619(Coca-Cola bottle)

Designated goods cola drink

Registered No. 4639603

Designated goods concrete block


3. Definitions of trademarks

The Japanese Trademark Act, revised in 1996 and enforced on Apr. 1 1997,

prescribes as follows.

Article 2 (Definitions, etc.)

(1) "Trademark" in this Act means any character(s), figure(s), sign(s) or

three-dimensional shape(s), or any combination thereof, or any combination thereof

with colors (hereinafter referred to as a "mark") which is:

(i) used in connection with the goods of a person who produces, certifies or assigns

the goods as a business; or

(ii) used in connection with the services of a person who provides or certifies the

services as a business (except those provided for in the preceding item).

…

(3) "Use" with respect to a mark as used in this Act means any of the following acts:

(i) to affix a mark to goods or packages of goods;

…

(4) To affix a mark to goods or other articles provided for in the preceding

paragraph shall include to form in the shape of the mark goods, packages of goods,

articles to be used for the provision of services, or advertisement materials relating

to goods or services. [the definition of a 3D trademark]

…

4. Conditions of 3D trademarks to be granted

Said Japanese Trademark Act also prescribes as follows.

Article 3 (Requirements for trademark registration)

(1) Any trademark to be used in connection with goods or services pertaining to the

business of an applicant may be registered, unless the trademark:

…

(iii) 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;


…

(2) Notwithstanding the preceding paragraph, a trademark that falls under any of

items (iii) to (v) of the preceding paragraph may be registered if, as a result of the

use of the trademark, consumers are able to recognize the goods or services as

those pertaining to a business of a particular person.

Article 4 (Unregistrable trademarks)

(1) Notwithstanding the preceding Article, no trademark shall be registered if the

trademark :

…

(xviii) consists solely of a three-dimensional shape of goods or their packaging

which is indispensable for such goods or their packaging to properly function

…

5. IP High Court decisions on the pure 3D trademarks, ratifying or

dismissing the decisions of the Appeal Board

(1) Yakult the first case decision on 17.7.2003

Designated good lactic acid drink

The points of decision

(as to a.3 p.1 i.3)

The applied trademark is acknowledged not to be unique in relation to a

designated good, even though it is a little designed and not to out of the shape

usually selected by the ordinary skilled person. So it consists solely of a mark

indicating, in a common manner, the shape of package (bottle) of the drink.

(as to a.3 p.2)

It is difficult for the court to permit the gaining of distinctiveness solely by the

bottle shape without any mark.


(2) SUNTORY case decision on 29.8.2005

designated good whiskey

the points of decision

(as to a.3 p.1 i.3)

The characteristic of the whiskey bottle concerning the applied trademark is the

one within the scope of being usually adopted in the same kind of goods to function

more effectively and promote the aesthetic feeling of the bottle, neither giving an

unpredictable unique shape nor a decorative shape with a special impression.

Therefore, to use the applied trademark to the designated good, whiskey, makes

dealers and consumers recognize the shape of the whiskey bottle itself.

Whereby the applied trademark is the one which consists solely of a mark

indicating, in a common manner, the shape of package (bottle) of the drink.

The 3D shape of the whiskey bottle has no distinctiveness by itself. Moreover

distinctiveness of the 3D shape is relatively small, if any, in the whole aesthetic

scheme of the bottle including a 2D mark thereon.


(3) MAG INSTRUMENT case decision on 27.6.2007

designated good flashlight

the points of decision

(as to a.3 p.1 i.3)

Concerning the shape of the applied trademark, a slightly larger head portion of

the light is for strengthening the light; groove patterns in the vicinity of the face

cap on the parabolic body portion are for easier regulation of the luminous

intensity; groove patterns on the central part of the body portion make for easier

grasping.

Moreover the slender outline on the head portion through the body portion is to

allow for aesthetic feeling. These characteristics intend to contribute to the

function or beauty of the good, therefore they resemble of a flashlight within the

scope of common consumer expectation.

Thus the shape of the applied trademark still exists and falls into the purview of

the necessary shape for displaying the fundamental function and beauty of a

flashlight, while at the same time, making it unable for customers at first glance at

the trademark, to recognize it as a mark showing the source of the good.

(as to a.3 p.2)

As for the good in question, it sustains the same shape in the market from the

start of sales in 1984, advertising in great scale the superiority of its design for a

long time, selling many goods, resulting in that, it has become recognized as a clear

mark for customers to distinguish the shape of the applicant’s goods from that of

the goods of others.


(4) Coca-Cola case decision on 29.5.2008

Designated good cola drink


(as to a.3 p.1 i.3)

The 3D shape of the applied trademark is objectively presumed to strengthen the

function and beauty of a cola drink bottle. Further, it is predictable by consumers

as the shape of a cola drink bottle.

(as to a.3 p.2)

Whether the trademark composed of the 3D shape gains distinctiveness should be

judged on the total ground of the starting time for use, the period of using, the area

of using, the quantum of selling for the goods, and the period, the area and the

scale of advertisement, and the existence of similar goods.

Whether the 3D shape independently gains distinctiveness should be judged

completely on whether it is easily recognized visually by consumers and whether it

gives a strong impression on consumers, even though the name or mark is attached

to the trademark [the shape] or the good in use, or there are slight differences

between the 3D shape and the trademark or the good in use.

Based on the above, the plaintiff ’s bottled goods have recorded miraculous sales

from the beginning of sale in 1957 and have maintained sales with the shape


unchanged for a lengthy period of time, repeating the advertisement of impressing

the characteristics of the shape. Thus, at the latest decision of the Appeal Board,

the 3D shape of the plaintiff ’s good has become recognized as a mark for customers

to distinguish it from the goods of other entities.

(5) Chocolaterie case decision on 30.6.2008

Designated good chocolate


(as to a.3 p.1 i.3)

The applied 3D trademark arranges in a line and imitates in 3D chocolate having

marble patterns, four kinds of figures of a shrimp, a fan-shaped shell, a sea horse

and a kind of shellfish. The selection, the combination and the order in an

arrangement of these four kinds of figures, and the unification of them with in the

color of the marble gives novelty to the applied trademark. We can not recognize

the existence of the same or a similar mark to the applied trademark even after all

evidence has been considered.

The applied trademark gives a whole impression to make it characteristic to

consumers so as to make it a mark for determining whether or not to buy the

designated goods of the applied trademark when considering a chocolate

confectionery purchase the next time.

In many cases of chocolate confectionery selection, taste is the most important

element. But the characters of the chocolate confectionery as a luxury item make


the shape itself important as well making it easy to distinguish it from others,

catching the attention of the dealer and consumer.

This is easily supposed from the fact that the shape of a chocolate confectionery

has a plate-like type, a 3D shape type or a 3D decorative type, etc. and each maker

tries to show its own identity by picking up one from the various 3D patterns etc..

Then the shape of the chocolate confectionery contributes to its distinctiveness and

awakens demand, as well as, strengthening its aesthetic value.

(6) Yakult the second case decision on 16.11.2010

designated good lactic acid drink

Article 3 paragraph 2 item3 is not disputed


(as to a.3 p.2)

Referring to the number of sales, the market share, the advertising situation and

the result of the survey etc., the 3D shape of the bottle in question is easy to be

recognized by consumers, as much as, or more than, the 2D trademark or figures

attached thereon and gives a strong impression to consumers, thus the shape itself

has gained distinctiveness independently.


(7) Karl Hansen case decision on 29.6.2011

designated good armchair


(as to a.3 p.1 i.3)

The characteristics of the shape of the applied 3D trademark are to improve the

functions of the armchair, case in point, to contribute to feelings of comfort etc. and

to strengthen its aesthetic value. Therefore, the shape gives the impression to

customers of a chair that is superior both in high functionality in comfort and

visual appeal. But the shape itself is not what make consumers recognize it

naturally as a mark for distinguishing the source of the goods.

(as to a.3 p.2)

The product of the plaintiff [chair] has a characteristic shape; the upper part of

the support of the back thereof is composed of a semi-circular bending wood

connecting the shade part and the armrest; the seat face is composed of woven

slender strings; the back panel supports the back part of the shade and the armrest


is formed into the shape similar to a “Y” or a “V”; the rear legs stretch upward over

the seat part to become the shape similar to an extended “S” in length; etc..

The chair has, for the most part, maintained its shape since the start of its sales

in 1950, and has been introduced and mentioned in articles of various magazines or

the like. It has been advertised and sold in great numbers. As a result, the

characteristics of the applied trademark, the shape of the product of the plaintiff,

allow consumers to easily recognize whose business is involved in the goods.

6. The format of the application of a 3D trademark

(1) one figure from a perspective view or more than two figures from different

views should be attached to an application. Instead of figures, photos are available.

(2) An expression of the 3D trademark is needed on the application.

7. How do you protect the shape of your product under Japanese IP laws ?

(1) protection procedure

Step1 : You should apply for the design of the shape of your product to be

granted under the Design Act

Duration of design rights 20 years from the grant

Step2 : In the term up until the obtaining of the grant of the design right and

within 3 years from the start of sales for the product,

The shape of your product could be protected under article 2 paragraph(1) item

(iii) of the Unfair Competition Prevention Act.


Article 2 (Definitions)

(1) The term “unfair competition” as used in this Act means any of the

following:

…

(iii) acts of assigning, leasing, displaying for the purpose of assignment or

leasing, exporting or importing goods which imitate the configuration (excluding

configuration that is indispensable for ensuring the function of said goods) of

another person’s goods;

…

Step3 : After gaining distinctiveness by exclusive sales under the design right

on the market for long term use,

You should apply for the pure 3D trademark of the shape of your product to be

granted under the Trademark Act

(2) Should you apply for the shape of your product to be granted under the Patent

Act?

In this case, you may disclose at least two kinds of shapes for your products to

avoid article 4 paragraph (1) item(xviii)of the Trademark Act to be applied in the

future.

8. Discussions


SO-A International Patent Firm (Former name: IBUKI IP-Law Partners)

Kenichi Morita (Japanese Patent Attorney)

tel : +81-52-253-7441 fax : +81-52-253-7442

e-mail : [email protected] hp : http;//www.yumetec.com

address : HUMIOKA Bldg.4F, 5-20-10 Chiyoda, Naka-ku,Nagoya-city, Aichi-Pref. 460-0012 JAPAN


mailto:[email protected]

Documents

The protection of 3D trademarks under the Japanese ...soua.jeez.jp/wp/wp-content/uploads/2011/09/The-protection-of-3D... · 3. Definitions of trademarks The Japanese Trademark Act,