HERMES INTERNATIONAL, a French luxury fashion house, is in a legal battle to register its iconic packaging colors, orange and brown, as a color mark in Japan.
Color mark of Hermes box
On October 25, 2018, HERMES INTERNATIONAL filed a trademark application for its iconic packaging colors, orange and brown (see below), as a color mark to be used on various goods in class 3, 14, 16, 18, and retail services in class 35 with the Japan Patent Office (JPO) [TM application no. 2018-133223].
Article 3(1)(iii) and 3(1)(vi)
The JPO examiner rejected the color mark under Article 3(1)(iii) and 3(1)(vi) of the Japan Trademark Law by stating that colors per se are unlikely to play a role in source indicator because they are frequently aimed to attract consumers in association with function or quality of goods and services. Because of it, relevant consumers at the sight of goods or services bearing the applied color would not see the combination of colors, orange and brown, as a source indicator.
Acquired Distinctiveness
Hermes argued acquired distinctiveness of the color combination as a result of substantial use on Hermes box for the past six decades from the 1960s onward.
A bottleneck is that the Hermes box contains its name “HERMES” and horse and carriage logo as a conspicuous source indicator. Hermes conducted market research to demonstrate the acquired distinctiveness of the packaging color per se. The research targeted high-income men and women in their 30s to 50s with incomes JPY10,000,000 and above. According to the research report, 36.9% of the interviewees answered Hermes when shown three boxes in different shapes with the color mark. 43.1% chose Hermes from ten options.
JPO Rejection
The JPO examiner did not find the research persuasive to support acquired distinctiveness among relevant consumers of the goods and services in question.
The examiner stated the relevant consumers shall not be limited to the high-income class. Besides, even among high-income consumers, more than half of them did not link the color to Hermes. From the research, it is doubtful if relevant consumers would conceive the color per se as a source indicator.
Based on the above findings, the examiner totally rejected the applied color mark under Article 3(1)(iii) and (vi) on July 9, 2021.
HERMES INTERNATIONAL filed an appeal against the rejection on October 8, 2021.
In a recent decision, the Appeal Board of Japan Patent Office (JPO) overturned the examiner’s rejection and decided to register the wordmark “F1” in standard character by finding acquired distinctiveness as a source indicator in relation to automobile races in class 41.
[Appeal case no. 2021-1819, Decision date: November 5, 2021]
F1
Formula One Licensing BV, managing the trademarks for the FIA Formula One World Championship, applied wordmark “F1” in standard character for use on ‘organization, arranging and conducting of automobile races; providing information relating to automobile races’ in class 41 on May 7, 2018 (TM App no. 2018-58985).
Article 3(1)(v)
The JPO examiner rejected the mark “F1” because of lack of inherent distinctiveness based on Article 3(1)(v) of the Japan Trademark Law on the grounds that a sign consisting of a digit and an alphabet is commonly used in transactions to represent article number, model number or standards. If so, the applied mark shall not play a role in a specific source indicator.
Article 3(1)(v) prohibits any mark from registering if it solely consists of a very simple and common sign.
Trademark Examination Guidelines (TEG) sets forth that a mark consisting of one or two alphabetical letters followed by a numeral, e.g. “A2”, “AB2”, is unregistrable under the article.
Followings are also enumerated as unregistrable marks under the article.
Numerals
One or two alphabetical letters, e.g. “AA”
Two alphabetical letters combined with “-” or “&”, e.g. “A-B”, “C&D”
One or two alphabetical letters accompanied by “Co.”, e.g. “AB Co.”
A numeral followed by one or two alphabetical letters, e.g. “2A”
The applicant filed an appeal against the refusal and argued the distinctiveness of the “FS12” mark.
Formula One Licensing BV filed an appeal against the refusal and argued acquired distinctiveness of the “F1” mark on February 9, 2021.
JPO Appeal Board decision
The Appeal Board affirmed the examiner’s finding that the applied mark “F1” inherently lacks distinctiveness as a source indicator and shall not be registered under Article 3(1)(v).
In the meantime, the Board found the mark has acquired distinctiveness as a result of substantial use in relation to automobile races to indicate Formula One for more than seven decades. The Board could not find a single fact that the term “F1” has been used in relation to the services in question by any entity unrelated to the applicant. If so, the Board has a reasonable ground to believe that relevant consumers and traders would conceive the mark “F1” as a source indicator of Formula One and shall be exceptionally registered under Article 3(2).
Article 3(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.
Based on the above findings, the Board overturned the examiner’s rejection and granted protection of the wordmark “F1” in standard character for use on services relating to automobile races in class 41.
The Japan Patent Office (JPO) affirmed the examiner’s refusal and decided to reject a wordmark “FS12” due to a lack of inherent distinctiveness. [Appeal case no. 2019-650019, Gazette issued date: January 29, 2021]
“FS12”
Fette Compacting GmbH filed a trademark application with the JPO via the Madrid Protocol (IR no. 1349196) for word mark “FS12” (see below) for use on goods of ‘Compression tools (parts of machines for the pharmaceutical industry, chemical industry, food industry, and metal industry) for producing pellets and tablets; die-table segments (parts of machines for the pharmaceutical industry, chemical industry, food industry, and metal industry) for rotary presses’ in class 7
Article 3(1)(v) of the Trademark Law
The JPO examiner refused the “FS12” mark in contravention of Article 3(1)(v) of the Trademark Law.
The article prohibits any mark from registering if it consists solely of a very simple and common mark.
Trademark Examination Guidelines (TEG)stipulates that a mark consisting of one or two alphabetical letters followed by a numeral, e.g. “A2”, “AB2”, is unregistrable under the article.
Followings are also enumerated as unregistrable marks under the article.
Numerals
One or two alphabetical letters, e.g. “AA”
Two alphabetical letters combined with “-” or “&”, e.g. “A-B”, “C&D”
One or two alphabetical letters accompanied by “Co.”, e.g. “AB Co.”
A numeral followed by one or two alphabetical letters, e.g. “2A”
The applicant filed an appeal against the refusal and argued distinctiveness of the “FS12” mark.
Appeal Board decision
However, the JPO Appeal Board dismissed the entire allegations and held that a mark consisting of a numeral and one or two alphabetical letters is incapable of identifying the source of the goods since the relevant public would perceive, without further thought, it to indicate a value, code, type, model or standard of the goods in question.
As a matter of fact, the Board found the combination of alphabetical letters, and a numeral is frequently used to indicate a value, code, type, model, or standard of the goods in relevant industries.
Given the mark “FS12” consists of two alphabetical letters and two digits written in regular font, the Board considers it is unlikely to play a role of source indicator and shall be unregistrable in contravention of Article 3(1)(v) of the Trademark Law.
To my knowledge, “FS12” would be mostly considered distinctive in other jurisdictions. Please be noted that a combination of one or two alphabetical letters and the numeral is deemed descriptive in relation to any kind of goods in Japan. To register such a mark, it is required to add a descriptive element or demonstrate acquired distinctiveness as a result of substantial use in Japan.
On December 17, 2020, the Japan IP High Court upheld awards for JPY2,900,000 for damages suffered by Hermès in relation to a trademark infringement and passing-off case regarding the Birkin Bag imitations. [Court case no. Reiwa2(Ne)10040]
Hermès Birkin Bag
HERMES INTERNATIONAL, a French luxury fashion house, has owned Japanese trademark registration no. 5438059 for the 3D shape of the “Birkin” bag in connection with handbags of class 25 since 2011 by successfully demonstrating acquired secondary meaning as a specific source indicator of Hermès’ luxury bags.
The iconic Birkin bag was firstly created for
Jane Birkin in 1984. It is known for its superior craftsmanship and
jaw-dropping price tag, with standard models starting around JPY1,000,000. Its annual
sales figures exceed 3,000 in 1998, 8,000 in 2003, and 17,000 in 2009.
Birkin Bag Imitations
Hermes sued Kabushiki Kaisha Tia Maria at the Tokyo District Court for violating its trademark right and the unfair competition prevention law by allegedly promoting 100 or more Birkin look-alike bags (see below) in Japan with a price tag of JPY27,300 from August 2010 to February 2018.
Court decision
On June 3, 2020, the Tokyo District Court decided in favor of HERMES INTERNATIONAL and awarded damages for trademark infringement and passing-off in the amount of JPY2,900,000. [court case no. Heisei31(wa)9997]
In the decision, the Tokyo District Court found
that Hermès Birkin Bag has acquired distinctiveness and become remarkably famous
as a source indicator of Hermès’ luxury bags by 2009.
Besides, the court held that defendant’s goods constitutes an infringement of the 3D shape of the “Birkin” bag trademark since both are confusingly similar in view of the following aspects: (a) a distinctive three-lobed flap design with keyhole-shaped notches to fit around the base of the handle, (b) a dimpled triangular profile, (c) a closure which consists of two thin, horizontal straps designed to fit over the flap, with metal plates at their end that fit over a circular turn lock, (d) a padlock which fits through the center eye of the turn lock and (e), typically, a key fob affixed to a leather strap, one end of which is affixed to the bag by wrapping around the base of one end of the handle.
Screen capture of TIA MARIA’s website (http://tiamaria.zf.shopserve.jp/SHOP/V1172S.html)
The court measured damages to recover (i) defendant’s
actual sales of infringing bags (JPY2,730,780) by subtracting appropriate variable
cost (40% of the offered price) for JPY1,638,468, (ii) “mental
suffering” caused by an infringement for JPY1,000,000, and (iii) reasonable
attorney fee for JPY260,000.
The district court decision was challenged by the defendant before the High Court to set aside or vary it, however, the IP High Court dismissed the appeal entirely and sided with HERMES INTERNATIONAL.
To read a full text of the IP High Court decision (Japanese only), click here.
Japan opened the gate to Non-Traditional trademark, namely, color, sound, position, motion, hologram, in April 2015. It seems true that, beyond expectation, JPO has a significantly high hurdle to clear.
543 applications for color marks were filed with the Japan Patent Office (JPO) as of now (Nov 15, 2020). Among them, only 8 color marks are allowed for registration.
1. Tombow Pencil “MONO” (stationery)
2. Seven-Eleven (convenience store)
3. Sumitomo Mitsui Financial Group
(financial service)
4. Sumitomo Mitsui Financial Group
(financial service)
5. Mitsubishi Pencil “UNI” (pencil)
6. Mitsubishi Pencil “HI-UNI” (pencil)
7. Family Mart (convenience store)
8. UCC Ueshima Coffee (canned coffee)
All the registered color marks consist of more than two colors. JPO has yet to register a single case of color per se.
Most single-color marks are rejected due to a lack of distinctiveness and failure to demonstrate acquired distinctiveness. Surprisingly, 492 applications (90.6%) are already rejected or voluntarily withdrawn by the applicant.
Red Bull was unsuccessful in registering a combination of dark blue and silver on energy drinks in class 32.
Hermes also failed to register a three-color combination over various goods in class 14, 18, and 25.
43 applications are in review with the JPO as of now. Remarkably, Christian Louboutin fights for the appeal against the refusal of its iconic red-sole.
On August 27, 2020, the Japan IP High Court ruled to affirm the Japan Patent Office (JPO) decision and rejected TM application no. 2016-34650 for a position mark consisting of fourteen open ellipses built-in grip section of cutting combs in class 21 due to a lack of inherent distinctiveness. [Court case no. Reiwa1(Gyo-ke)10143]
YS Park Cutting Comb
The YS Park Cutting Comb features a non-slip grip section with fourteen air ellipses spaced in 1cm intervals to allow for great flexibility and sectioning.
Allegedly, the comb has been distributed in
many countries and its annual sales increased to 170,000~27,000 pieces for the
last five years.
Position Mark
Plaintiff, a Japanese corporation to distribute the YS Park Cutting Comb since 1989, sought for registration for fourteen open ellipses built-in grip section of the Cutting Comb as a Position Mark (see below) on March 28, 2016.
In Japan, by an enactment of the New Trademark Law in 2014, new types of mark, namely, color, sound, position, motion, hologram, was allowed for trademark registration since April 2015.
JPO decision
On September 17, 2019, the JPO refused the position mark under Article 3(1)(vi) of the Trademark Law by finding that there are plenty of competitor’s combs with a design, pattern, hole, or pit in short intervals on the grip section and it gives rise to an impression of the decorative or functional linear pattern as a whole. If so, relevant consumers at the sight of cutting comb bearing the position mark would just conceive it as a pattern for decorative or functional indication, not as a source indicator. Besides, consecutive use on the YS Park Cutting Comb over a decade would be insufficient to acquire secondary meaning from the produced evidence and business practice in relation to cutting comb. [Appeal case no. 2018-8775]
Article 3(1)(vi) is a provision to
comprehensively prohibit from registering any mark lacking inherent
distinctiveness.
Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark: (vi) is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.
To contend, the applicant filed a lawsuit to the IP High Court on October 29, 2019, and demanded cancellation of the decision.
IP High Court Ruling
This is the 2nd court case for the IP High Court to hear the registrability of Position Mark.
At the outset, the court stated the distinctiveness of Position Mark shall be assessed as a whole by taking account of a constituent of the mark and its position on goods or services.
The court upheld fact-findings by the JPO that plenty of competitors advertise and provide cutting combs with a pattern, pit, or open holes in short intervals on the grip section to enhance its function. In this regard, it is unlikely that relevant consumers (general consumers on the case) would consider the whole pattern as a source indicator of the comb. The court pointed that plaintiff has promoted features of fourteen open ellipses on YS Park Cutting Comb with an advertisement of “Air Suspension Function” in fact. If so, consumers would find the open holes as a functional indication.
Plaintiff produced interviews and statements by beauticians, hairstylists, school officials/staff of Cosmetology and Beauty school and argued the secondary meaning of the Position mark, however, the court negated the allegation on the ground that such evidence is insufficient and irrelevant to demonstrate acquired distinctiveness since the goods in question shall be broadly targeted to general consumers. Thus, the court decided the JPO did not error in finding secondary meaning in the case.
On 23 June 2020, the Japan IP High Court decided a case concerning a single color mark that was rejected for registration by the Appeal Board of the Japan Patent Office (“JPO”).
Single Color Mark
On 1 April 2015, Hitachi Construction Machinery (“Hitachi”) filed an application for trademark registration with JPO consisting of a single color per se, namely orange (Munsell: 0.5YR5.6/11.2) over the goods of hydraulic excavators, wheel loaders, road loaders, loaders [earch moving machines] in class 7, and rigid dump trucks in class 12 (TM Application no. 2015-29999).
TM Application No. 2015-29999
By the decision of 19 September 2019, the Appeal
Board of JPO declared the applied color mark to be refused in contravention of Article
3(1)(iii) and Article 3(2) of the Trademark Law, finding that the
graphic representation of the color mark constituted the “mere single orange
color, without contours”. If so, the mark is not inherently distinctive
and it is lacking acquired distinctiveness. In the course of the appeal trial,
Hitachi amended and restricted the designated goods to “hydraulic excavators”.
Article 3(2) is a provision to allow registration of any mark with which the relevant public will associate a particular source, manufacturer, or producer over time through the trademark owner’s usage.
On 30 October 2019, Hitachi appealed
against the JPO decision.
IP High Court decision
At the outset, the court stated it is inevitable
on the case concerning single color mark to take the interest of competitors who
deal with the goods in question into consideration since allowing one trader to
exclusively use this color would likely to cause unjust competitive practice in
form of monopolistic power of use in favor of one trader only.
From the produced evidence, Hitachi has allegedly used the color in question on hydraulic excavators and other construction machines since 1974.
Hitachi Hydraulic Excavators
Hitachi consecutively holds a 20% market share (14.6%) of hydraulic excavators over the past four decades in Japan. The research showed that approx. 95.9 % (185 out of 193) of traders in the construction industry were able to associate the color with Hitachi.
In the meantime, several competitors use similar color on hydraulic excavators
In the decision, the court found orange color is one of the colors commonly seen in our daily life. Besides, the Japan Industrial Standard (JIS) adopts orange as a safety sign-color aiming to prevent harm to the human body and damage to properties. Because of it, at construction sites, we often see several items colored in orange, e.g. helmets, rain suits, guard fens, work clothes, tower cranes, construction vehicles.
Hitachi Hydraulic Excavators have other colors, in fact, namely, a house mark “HITACHI” colored in white, buckets (attachments), cockpits, and crawlers colored in black. If so, the applied mark shall be capable of playing the role of source indicator in combination with these. Thus, the court would not find reasonable grounds to believe that the orange color per se acquired distinctiveness as a source indicator of Hitachi’s Hydraulic Excavators.
The court even suspected credibility of the research by finding that it narrowly targeted traders or consumers who own more than 10 hydraulic excavators, precisely it showed 36.8% in light of initial research number of targets, 502 persons, and the questionnaire ‘Please answer. What maker do you think hydraulic excavator is?” was insufficient to conclude acquired distinctiveness since its answer may simply suggest one of the colors of Hitachi’s Hydraulic Excavators.
Even if hydraulic excavators market in Japan is an oligopoly with five makers accounting for 90 % of the industry share, and the orange color has been consecutively used by Hitachi only, it does not mean every competitor agreed to refrain from using the color given orange has been used on various goods in the construction and agriculture industry in general.
Based on the foregoing, the court affirmed the JPO decision and dismissed Hitachi’s allegations in contravention of Article 3(1)(iii) and 3(2).
Thus, it is obvious that a very high standard of distinctiveness needs to be attached to a single-color mark if the same has to be claimed for trademark protection.
This case was a second court decision concerning a single color mark. The first case, Reiwa1(Gyo-ke)10119 ruled on March 11, 2020, also ended with the rejection of a single orange color mark in contravention of other ground, Article 3(1)(vi).
How JPO Examines Color Marks
As of now (12 July 2020), 543 color marks were applied for registration with JPO since the commencement of the Non-Traditional trademark application in April 2015. So far, only 8 marks are successfully registered. See below.
In sum, the registration rate of color mark is barely 1.5%! It is noteworthy none of a ‘single’ color mark has been granted to registration.
The Japan Patent Office (JPO) allowed trademark registration of “Ghana” in connection with chocolates of class 30 by finding acquired distinctiveness as a source indicator of Lotte Co., Ltd., a Korea-based confectionary company. [Appeal case no. 2019-8784, Gazette issued date: May 29, 2020]
Lotte “Ghana” Chocolates
Ghana chocolate is Lotte’s signature product and one of the most beloved chocolate in Japan for many years.
Lotte Co., Ltd. launched chocolates bearing the “Ghana” mark in 1964. Since then, the mark has been prominently indicated on the packages.
[“Ghana” chocolate package back in 1970’s – TM Reg no. 892507]
In 1994 of the 30th anniversary, Lotte slightly changed the design of its package and the mark and added different tastes of “Ghana” chocolates, e.g. milk chocolates, white chocolates. On new packages, the “Ghana” mark is much conspicuously and largely indicated than before.
[Current package – TM Reg no. 5405402, registered on April 8, 2011]
On December 8, 2017, Lotte sought trademark registration for the current “Ghana” logo (see below) over chocolates in class 30. [TM application no. 2017-161593]
Article 3(1)(iii) & 4(1)(xvi)
The JPO rejected the “Ghana” mark in contravention of Article 3(1)(iii) and 4(1)(xvi) of the Japan Trademark Law by stating that “Ghana” is a geographical indication corresponding to Republic of Ghana, a country of western Africa, situated on the coast of the Gulf of Guinea, one of the major producers of high-quality cocoa beans. Therefore, relevant consumers and traders at the sight of chocolates bearing the “Ghana” mark would merely conceive it of the origin of cocoa beans. Besides, whenever the mark is used on chocolates not made from Ghana cocoa beans, it inevitably misleads the quality of goods.
Acquired distinctiveness
Lotte argued the “Ghana” mark shall be protectable based on Article 3(2), even if nominally unregistrable under Article 3(1)(iii) because it has acquired distinctiveness as a result of substantial and continuous use on chocolates in Japan.
Article 3(2) of the Trademark Law
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.
Appeal Board decision
The Appeal Board affirmed examiner’s
rejection pertinent to lack of distinctiveness in connection with goods in
question, however, the Board held that the “Ghana” mark would function as a
source indicator of Lotte chocolates consequently and thus registrable based on
the acquired distinctiveness under Article 3(2).
Allegedly Lotte “Ghana” chocolates hold
top-ranked market share in Japan since 2017. In 2008, Lotte sold more than 100
million bars of “Ghana” chocolates. The annual sales exceeded 1.2 billion JP-yen
in 2017.
Lotte has long been aggressive not only to advertise “Ghana” chocolates in newspapers, TV commercials, trains, and stations, but also to launch lots of chocolate events and campaigns on Valentine’s Day or Mother’s Day nationwide, and collaborations with retailers, hotels restaurants featuring ‘Ghana’ chocolates.
Due to their marketing efforts, Lotte “Ghana”
brand chocolates could win several awards, e.g. Monde Selection ‘Gold Award’
(2008, 2009, 2010), D2C ‘Marketing Award’ (2002), The Japan Food Journal ‘Long
Seller Award’ (2008), DENTSU ‘Excellent Award’ (2009, 2010, 2011), JR East ‘Excellent
Advertisement Award’’.
Besides, “Ghana” chocolates ranked top in the
brand survey published by Nikkei Research in 2016.
Lotte could eventually achieve registration of the “Ghana” mark on chocolates, but it spent more than five decades to that end.
Interestingly. Lotte has registered the “GANA” mark on goods of class 30 including chocolates since 1990. It must aim to prevent a third party from registering any mark similar to “Ghana”.
On February 14 2020, the Japan IP High Court ruled to uphold the Japan Patent Office (JPO) decision and rejected TM application no. 2016-009831 for a 3D position mark consisting of three virtual images of oil stove flame due to a lack of inherent and acquired distinctiveness. [Case no. Reiwa1(Gyo-ke)10125]
TOYOTOMI Oil Stove “Rainbow”
TOYOTOMI CO., LTD., a Japanese company, the world’s first manufacturer of kerosene-fired portable cooking stove in 1952, has allegedly produced their convection type lantern-like design oil stoves in the name of “Rainbow” since 1980.
By means of a heat-resistant glass coated on the inner surface of vertical cylindrical heat chamber of the Rainbow stoves, virtual images of orange flame appear floatingly above actual flame when stoves are in use (see below).
3D Position mark
TOYOTOMI sought for registration for its
virtual images of flame in connection with convection type oil stoves in class
11 as a 3D Position mark (see below) on January 29, 2016.
In a description of the mark, applicant specified:
“applied mark is a position mark consisting of 3D virtual image of three flame rings appeared floatingly above the flame burning on stove at the inside of vertical cylindrical heat chamber. Devices colored in blue and red would not constitute an element of applied mark.“
In Japan, by enactment of the New Trademark Law in 2014, new type of mark, namely, color, sound, position, motion, hologram, was allowed for trademark registration since April 2015.
According to the JPO database, more than
480 position marks were applied for registration under the New Trademark Law
and 78 position marks are successfully registered as of now (Feb 29, 2020).
JPO decision
On March 2, 2018, the JPO examiner refused applied
mark under Article 3(1)(iii) of the Trademark Law based on the fact that mechanism
of 3D virtual shape of three flame rings was exclusively protected under Patent
No. 1508319 which was expired on July 25, 2000. According to technical specifications
of the patent, it is admitted that the 3D shape was purely achieved as a result
of utilitarian functionality and aesthetic functionality. If so, the JPO finds
it inappropriate to register the shape as a trademark because of unfair and detrimental
effect to the public caused by prospective perpetual exclusivity to the shape
itself that should have been a public domain under the Patent Law.
Besides, the JPO considered applied mark has
not acquired distinctiveness (secondary meaning) as a source indicator of
applicant’s products regardless of substantial use for more than three decades.
Subsequently, JPO dismissed an appeal on
the same ground. [Appeal case no. 2018-007479, on August 30, 2019]
To contend, applicant filed a lawsuit to
the IP High Court on September 26, 2019 and demanded cancellation of the
decision.
IP High Court ruling
This lawsuit was the very first case for the IP High Court to take up new type of trademark at the open court.
The court held a shape of goods shall not
be protectable as a source indicator if it just aims to achieve function of the
goods from utilitarian and aesthetic viewpoints. If such shape per se is apparently
destined to achieve functions of goods, it shall be refused for registration
under Article 3(1)(iii) of the Trademark Law.
In this regard, the court found, applied mark simply consists of a shape destined to achieve utilitarian and aesthetic functions of goods in question, since it is considered virtual images of floating flame ring aim to increase heating effect of convection type oil stoves.
A mere fact that none of competitors have used
identical or similar shape with applied mark on oil stoves would be irrelevant
to assess distinctiveness of mark under Article 3(1)(iii).
Even if three flame rings do not physically
constitute a shape of oil stoves, the court would see the JPO did not error in
adapting Article 3(1)(iii) on the case.
As for acquired distinctiveness, the court had
no reason to believe applied mark acquired secondary meaning through actual use
based on the produced evidence. TOYOTOMI allegedly held top-rank market share (22.5%)
of convection type oil stoves in Japan and annually delivered 29,000 stoves on
average for the last seven years. However, the court pointed out the TOYOTOMI
Rainbow stoves share just 2% when radiation type oil stoves are counted.
Besides, provided that applied mark is not visible to consumers who visit shops
to purchase oil stoves from appearance of the goods when turned off, it is questionable
whether average consumers would conceive the 3D shape as a source indicator, rather
than a functional shape of oil stoves.
Based on the foregoing, the IP High Court
upheld JPO decision.
The Japan Patent Office recently admitted trademark registration for a three-dimensional shape of digital thermometers ‘MC-670’ and ‘MC-681’ manufactured by Omron Healthcare Co., Ltd. by finding acquired distinctiveness in relation to thermometers (cl.10) under Article 3(2) of the Japan Trademark Law. [Appeal case no. 2019-10386, Gazette issued date: October 29, 2019]
3D shape of the Omron digital thermometer
Omron Healthcare Co., Ltd. filed a trademark solely consisting of three-dimensional shape of its digital thermometers ‘MC-670’ and ‘MC-681’ (see below) in relation to thermometers in class 10 on August 28, 2018. [TM application no. 2018-108289]
JPO examiner entirely rejected the
application on the ground that in general pen-shape digital thermometers have a
similar configuration with the applied mark. If so, it is unlikely that relevant
consumers and traders conceive the shape as a source indicator of the goods. Hence,
the mark is subject to Article 3(1)(iii) of the Trademark Law.
Article 3(1)(iii)
is a provision to prohibit any mark from registering where the mark solely
consists of elements just to indicate, in a common manner, 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.
To dispute the refusal, applicant, Omron
filed an appeal on August 6, 2019.
The Appeal Board affirmed examiner’s
rejection of the 3D shape based on lack of distinctiveness. In the meantime, the
Board granted protection of the 3D shape by finding acquired distinctiveness under
Article 3(2).
Article 3(2)
of the Trademark Law
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.
Allegedly Omron has continuously used the
3D shape on its digital thermometers ‘MC-670’ and ‘MC-681’ since November 2004.
Omron holds top-ranked market share (43.9%) of digital thermometers in Japan. ‘MC-670’
and ‘MC-681’ have been sold more than 4million sets over the last decade and maintains
the 2nd market share (8.7%) in 2018.
The Board took a favorable view of the package design to appeal its 3D shape in an impression and conspicuous manner (see below), advertisements and award-winning.
According to the produced interview report, 60% of the interviewees (total of one thousand people who have digital thermometer or use it more than once a year ranging in age from 20 to 69) associated the shape with Omron or its digital thermometers.
Since Omron has been aggressive to stop competitors
using resembled shape on their thermometers, the Board considered that the 3D
shape is distinguishable to achieve its role as a source indicator consequently
even if the “OMRON” mark is represented on the thermometers.
Based on the above findings, the Board held that the 3D shape would be conceived as a source indicator of Omron thermometers and thus registrable based on the acquired distinctiveness under Article 3(2). [TM Registration no. 6197317]
