カテゴリー: Inherent distinctiveness

P&G Unsuccessful attempt to register 3D shape of SK-II bottle

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In an attempt to register TM App no. 2020-1611 for 3D mark representing a bottle shape of the SK-II Facial Moisturizing Lotions, the Japan Patent Office (JPO) upheld the examiner’s rejection and dismissed the appeal filed by The Procter & Gamble Company (P&G).
[Appeal case no. 2022-6, decided on May 9, 2024]

SK-II

P&G filed a trademark application for 3D bottle shape of the SK-II cosmetic lotions (see below) in class 3 with the JPO on February 14, 2020 (TM App no. 2020-1611).

SK-II is a Japanese-based multinational beauty brand with premium skincare solutions sold in East Asia, North America, Europe, and Australia, launched in the early 1980s.

Allegedly, domestic sales of the “SK-II” facial treatment essence (moisturizing lotions) contained in the applied 3D mark were approximately JPY 10 billion to 16.5 billion in each of the fiscal years from 2016 to 2020.

Article 3(1)(iii)

The JPO examiner rejected the 3D mark based on Article 3(1)(iii) of the Japan Trademark Law due to a lack of inherent distinctiveness.

Article 3(1)(iii) is a provision to prohibit registration of any mark that is descriptive in relation to designated goods and service. Trademark Examination Guideline (TEG) refers to 3D bottle shape of goods as an example subject to the article.

Where trademark is merely recognized as the shapes of designated goods (including shape of packages), it is evaluated just to indicate the “shape” of the goods. Moreover, the same principle shall apply to cases where a trademark is recognized as part of the shapes of designated goods (including their packages).

Article 3(2)

P&G argued acquired distinctiveness of the 3D mark as a result of substantial use. However, the examiner rejected the argument, stating that since the applied mark has been consistently used with the word mark “SK-II” on every bottle, there is no reason to believe that the 3D shape perse has played a role in identifying the source of the cosmetics.
Therefore, the applied mark shall not be registrable based on Article 3(2) of the Trademark Law due to a lack of acquired distinctiveness.

JPO decision

The JPO Appeal Board found the applied mark should be rejected in accordance with Article 3(1)(iii) due to the prevalence of cylindrical bottles in the contexts of cosmetics and other industries.

In its decision, the Board noted that a considerable amount of sales had been made to date and that advertising and promotional activities had been conducted at a considerable expense. The SK-II cosmetics bearing the 3D mark have been extensively advertised through a variety of channels, including magazine advertisements, TV commercials, events, and other campaign activities. They have also been widely covered by the web media and other media outlets.

In the meantime, the Board pointed out the use of distinctive words, such as “SK-II”, “SECRET KEY II”, “MAX FACTOR” etc., on the bottle of the CK-II facial moisturizing lotions. In this respect, there is no sufficient evidence and material featuring the 3D mark so that consumers at the sight of advertisements can consider the bottle shape as a source indicator.

Besides, P&G did not produce evidence of brand awareness survey to demonstrate acquired distinctiveness of the bottle shape. The registration of the same mark in other jurisdictions, such as the United Arab Emirates and South Korea, does not have any binding power in Japan when it comes to evaluating distinctiveness.

Based on the above findings, the Board concluded that the 3D mark per se has not acquired distinctiveness and should not apply Article 3(2).

IP High Court Rejected TM Registration of AP “ROYAL OAK” Watch Design

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On March 28, 2024, the Japan IP High Court decided to dismiss the appeal filed by Audemars Piguet Holding SA, a Swiss luxury watchmaker, against the JPO’s decision (Appeal No. 2021-013234) to reject TM Application No. 2020-20319 for the device mark representing AP’s iconic “ROYAL OAK” watch collection for lack of both inherent and acquired distinctiveness.
[Court case no. Reiwa5(Gyo-ke)10119]

Audemars Piguet “ROYAL OAK” Watch Collection

On February 26, 2020, Audemars Piguet Holding SA (AP) filed a trademark application for the shape of the flagship watch collection “ROYAL OAK” (see below) to be used on ‘watches’ in class 14 with the Japan Patent Office (JPO) [TM application no. 2020-20319].

The mark consists of a dial with tapisserie pattern and hour markers, minute track, date window, an octagonal bezel with 8 hexagonal screws, case, a crown, and a lug of the famed “ROYAL OAK” watch collections.

JPO Refusal

On June 8, 2023, the JPO Appeal Board affirmed the examiner’s rejection and decided to refuse registration of the applied mark due to a lack of inherent distinctiveness based on Articles 3(1)(iii) of the Japan Trademark Law by stating that relevant consumers would simply recognize it as a generic shape of a wristwatch, not a specific source indication since many watchmakers have supplied with similar shape to the dial, bezel, case, crown, and lug of the applied mark (see below examples).

Besides, the Board found the produced evidence is insufficient to determine whether the shape per se has acquired nationwide recognition as a source indicator of AP’s watches.

Audemars Piguet Holding SA filed a lawsuit with the Japan IP High Court on October 20, 2023, and disputed inherent and acquired distinctiveness of the applied mark.

IP High Court ruling

  • Inherent distinctiveness: Article 3(1)(iii)

In the decision, the judge said “There is no particular circumstance in which the shape represented by the applied mark is taken novel in comparison with the shapes of other wristwatches. If so, it is considered within the range of shapes normally required to achieve basic function of the goods. Even supposing that the shape is unique as a whole, the shape of each component is made in a form suitable for use as a wristwatch, and selected from the viewpoint to achieve the function of the goods. Therefore, the applied mark lacks distinctiveness since it remains within the scope of expected selection of the shape for functional reasons of a wristwatch.”

AP claimed the JPO finding is inadequate because none of competitors watches have the same combination of three unique features, namely, (i) an octagonal bezel, (ii) 8 hexagonal screws, and (iii) tapisserie pattern on the surface of a dial. Visual similarity in one or two components are insufficient to deny inherent distinctiveness of the applied mark.

However, the court did not agree with this allegation and said “It is sufficient to assess whether each shape of components is distinctive as part of the shape of wristwatch”.

  • Acquired distinctiveness: Article 3(2)

AP argued acquired distinctiveness of the applied mark as a result of substantial use since 1972. Allegedly, annual sales of the “ROYAL OAK” luxury watches exceed JPY 8 billion on average in the past six years. Each year, AP spent more than JPY400 million on advertisement and promotion in Japan.

In this respect, the court pointed out the “ROYAL OAK” watches have some collections that do not represent three unique features, such as, “Royal Oak Offshore” and “Royal Oak Concept” (see below). If so, the annual sales and expenditures on advertisement and promotion would not all attribute to watches representing the applied mark.

Besides, AP has not produced the result of market research to demonstrate a certain degree of recognition of the applied mark. Accordingly, the court has no reason to believe the applied mark per se has played a role in identifying the source of famous luxury watch, Audemas Piguet.

Based on the foregoing, the court determined that the JPO did not err in its findings and that the application of Article 3(1)(iii) and 3(2) was appropriate. As a result, the court decided to dismiss the appeal in its entirely.

Japan IP High Court said No to registering the color of Hermes packaging.

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The Japan IP High Court ruled to dismiss Herme’s appeal against the JPO decision that rejected Hermes packaging color due to a lack of inherent and acquired distinctiveness.
[Court case no. Reiwa5 (Gyo-ke) 10095, ruled on March 11, 2024]

Color mark of Hermes box

On August 23, 2023, HERMES INTERNARTIONAL filed an appeal with the Japan IP High Court to seek the cancellation of the JPO refusal decision (Appeal case no. 2021-13743) that denied registration of TM App no. 2018-133223 for a color mark consisting of orange on the entire box and brown on the upper outline of the box. (see below)

The application designates various goods in classes 3, 14, 16, 18, and retail services for the goods in class 35.

Second Market Research

HERMES conducted a second market research study in August 2023 to demonstrate acquired distinctiveness of its packaging color. The study targeted men and women in their 30s to 50s residing in nine prefectures who expressed interest in bags, accessories, watches, cosmetics, or perfume and had purchased either of these items within the past six months.

According to the second research report, 39.2% of respondents (2,060 in total) answered Hermes when shown three Hermes boxes in different shapes. 44.4% chose Hermes from the ten options (It is notable that 27.2% of respondents selected “Louis Vuitton” as their answer).

IP High Court decision

In their ruling, the judges pointed out the applied mark is classified into a mark consisting of colors, but from descriptions of mark, it is considered a two-color mark combined with a three-dimensional shape (a box).

The judges also noted the submitted evidence did not demonstrate the actual use of the applied mark in relation to perfumery of class 3 and paper boxes, paper bags, paper packages and wrapping papers of class 16, nor did it substantiate the use of the mark in relation to retail services for these goods in class 35.

The judge recognized that the “Hermes” brand has gained significant recognition in Japan, and its degree of renown is considered to be one of the most prominent among all fashion brands. From the submitted advertisement and publications, the applied mark evidently has been used as a symbolic color to indicate “Hermes” in a marketing tactic designed to enhance brand value. It is clear that the Hermes box is a well-known and important identifier for consumers interested in or who have purchased luxury fashion items.

The issue is whether relevant consumers can identify Hermes from the colors per se on Hermes box, without the word “Hermes” and the horse and carriage emblem. In this respect, the court said it useful to review brand recognition research especially in a case for color mark. The judges said the result of two market researches are sufficient (Recognition rate: approximately 40%) to admit acquired distinctiveness in general. However, two researches do not target general consumers by excluding age under 29 and over 60, and limiting their incomes JPY10,000,000 and above (1st research) or those who expressed interest in bags, accessories, watches, cosmetics, or perfume and had purchased either of these items within the past six months (2nd research).

Given the applied mark covers various goods that are regularly consumed by the general public, the researches with such limitations are inadequate and insufficient as evidence to demonstrate acquired distinctiveness of the color mark in question.

Therefore, the court has a reason to believe the JPO did not make an error in denying inherent and acquired distinctiveness of the applied mark and rejecting it based on Article 3(1)(iii) and 3(2) of the Trademark Law.

Based on the foregoing, the court decided to dismiss the entire appeal by Hermes.

Trademark dispute: “CLUB MOET” vs “Moët & Chandon”

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The Japan Patent Office (JPO) cancelled trademark registration no 6687666 due to a likelihood of confusion with ‘Moët’, which is known as an abbreviation for the world-famous ‘Moët & Chandon’ champagne.
[Opposition case no. 2023-900130, decided on February 29, 2024]

CLUB MOET

Opposed mark, consisting of words “CLUB” and “MOET” combined with a rose design (see below), was filed on June 27, 2021 for use on restaurant services in class 43 by a Japanese individual.

The JPO examiner rejected the mark due to a likelihood of confusion with famous mark “Moët” in connection with alcoholic beverages based on Article 4(1)(xv) of the Trademark Law on January 14, 2022. To contest the decision, the applicant filed an appeal with the JPO and claimed to cancel the examiner’s rejection.

On March 16, 2023, the JPO Appeal Board disaffirmed the examiner’s rejection and found that the mark would not contain the term “MOET” visually because of a rose design in between “M” and “ET”. If so, relevant consumers are unlikely to associate the mark with “Moët & Chandon” even if the term “MOET” has acquired a certain degree of recognition as an abbreviation of world-famous “Moët & Chandon” champaign. [Appeal case no. 2022-5881]

Accordingly, the Board granted protection of the mark and published for a post-grant opposition on April 17, 2023.

MHCS – OPPOSITION

On May 31, 2023, MHCS, the producer of the famous Moët & Chandon champagne, sought cancellation of the opposed mark in contravention of the same article, and claimed the opposed mark is likely to cause confusion with “Moët & Chandon” when used on restaurant service in class 43.

MHCS argued that the combination of literal elements and the rose design can be considered to represent the term ‘MOET’, as the rose design resembles a stylised letter ‘O’. As ‘CLUB’ lacks distinctive character in relation to restaurant service, the term ‘MOET’ should be considered a significant portion as a source indicator.

If so, relevant consumers are likely to associate or misconnect the restaurant using the opposed mark with “Moët & Chandon” due to the high degree of reputation and popularity of the mark “MOET” as an abbreviation of the world-famous champaign, as well as the close resemblance between the opposed mark and “MOET”.

JPO decision

The JPO Opposition Board ruled in favor of MHCS, stating that both ‘Moët & Chandon’ and its abbreviation ‘Moët’ have gained significant recognition as a leading champagne brand distributed by MHCS.

The Board determined that the rose design’s outline is almost circular and can be substituted with the letter ‘O’. Therefore, the combination of the literal elements and the rose design will be identified as the term ‘MOET’ in its entirety.

The difference between ‘MOET’ and ‘Moët’ is insignificant. The term ‘CLUB’ lacks distinctiveness in relation to the service in question. Therefore, the Board has reason to find a high degree of similarity between the opposed mark and ‘Moët’.

Besides, there is a certain degree of association between champagne and restaurant services.

Based on the foregoing, the Opposition Board decided that found relevant consumers are likely to confuse a source of restaurant using the opposed mark with MHCS or any business entity that is economically or systematically connected with the opponent. As a result, the opposed mark was cancelled in contravention of Article 4(1)(xv).

RIMOWA Unsuccessful in Trademark Opposition

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On February 26, 2024, the Japan Patent Office (JPO) dismissed an opposition filed by Rimowa GmbH against TM Reg no. 6701836 for wordmark “RIMOWA” written in Japanese character in class 38 and 42 by finding dissimilarity to earlier IR no. 1303010 “Rimowa Electronic Tag”.
[Opposition case no. 2023-900179]

Opposed mark

Opposed mark, consisting of three Japanese hiragana character “りもわ” that corresponds to the Japanese transliteration of “RIMOWA”, was flied with the JPO by Computer Engineering & Consulting Ltd. (CEC) a Japanese company, for use on ‘Telecommunication; Providing online forums; Communications by mobile phones; Streaming of data; Electronic bulletin board services [telecommunications services]; Video-on-demand transmission; Videoconferencing services’ in class 38 and ‘Providing computer programs on data networks; Software as a service [SaaS]; Platform as a service [PaaS]; Providing virtual computer systems through cloud computing; Providing computer software for virtual reality’ in class 42 on Nov 21, 2022 (TM App no. 2022-133281).

The JPO examiner issued an office action based on Article 4(1)(xi) of the Japan Trademark Law by citing IR no. 1452467 “RIMOWA” (cl. 9) owned by Rimowa GmbH.

As the applicant deleted the services in class 42 that conflict with the goods in class 9 designated under IR no. 1452467, the examiner granted protection of the mark on May 12, 2023.

The applicant uses the mark in relation to virtual office services. If this is the case, the mark indicates an abbreviation of ‘Remote working’.

Opposition by RIMOWA

Rimowa GmbH, the renowned German luxury luggage-maker, filed an opposition with the JPO on August 7, 2023 and claimed cancellation of the opposed mark in contravention of Article 4(1)(xi) by citing IR no. 1303010 for wordmark “Rimowa Electronic Tag” that covers services in class 38 and 42.

Rimowa argued that the term ‘Rimowa’ is well-known among relevant consumers as a high-end luggage brand and should play a significant role in identifying the source of services in classes 38 and 42. This is because the term ‘Electronic Tag’ is less distinctive in relation to these services. Therefore, the opposed mark may be confusingly similar to the cited mark from a visual point of view.

JPO decision

The JPO Opposition Board found the opposed mark is not an ordinary word in dictionaries and has a sound of “Rimowa” but does not give rise to any specific meaning.

Regarding the cited mark, the Board determined that it should be evaluated as a whole, rather than based on the individual words ‘Electronic Tag’. This approach considers the tight combination of all the letters in the cited mark.

If so, the Board stated that there is no reason to believe that the term ‘Rimowa’ is a significant part of the cited mark as a source indicator.

When comparing the opposed mark to the cited mark in terms of appearance, it is easy to distinguish between them due to the obvious differences in characters (hiragana and alphabets) and the number of letters. In terms of pronunciation, the term ‘Electronic Tag’ makes a clear difference in the overall sound of two marks. Therefore, it is easily distinguishable when pronounced, even though the initial sound is the same. Furthermore, in terms of concept, neither of the two marks produces a specific meaning, making them incomparable. Therefore, considering these findings and circumstances, there is no risk of confusion regarding the origin, even when they are used for the same or similar services.

Based on the above, the Board found that both marks were dissimilar and decided to dismiss all allegations.

Hummel Victory in Appeal to Overcome Rejection against Chevron Position Mark

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The Japan Patent Office (JPO) Appeal Board disaffirmed the examiner’s rejection and granted registration of TM App nos. 2018-133121 and 2018-133123 for a position mark consisting of chevron devices in relation to jackets and pants (trousers) of class 25 by finding inherent distinctiveness of the position marks.
[Appeal case nos. 2022-13211, 2022-13212 decided on December 20, 2023]

Hummel Chevron Position Mark

Hummel Holding AS filed two position marks with the JPO (TM App nos. 2018-133121, 2018-133123) on October 25, 2018. TM App no. 2018-133121 consists of 15 chevron devices positioned in series from shoulder to sleeve (see below left), and designates long-sleeved jackets in class 25. TM App no. 2018-133123 consists of 21 chevron devices positioned in series from waist to hem (see below right), and designates pants and trousers in class 25.

JPO Examination

On May 25, 2022, the JPO examiner rejected both marks based on Article 3(1)(vi) of the Japan Trademark Law by stating that:

In fashion industry, there are plenty of jackets and pants with decorations aiming to enhance aesthetic effect of the goods and attract consumers.  Under the circumstances, relevant consumers at the sight of pants or jackets bearing the position mark would not see it as a source indicator, but as a pattern for decorative or functional indication.

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.

Hummel Holding AS filed an appeal against the rejection on August 23, 2022 and argued inherent distinctiveness of the position marks.

JPO Appeal Board decision

The Appeal Board found that respective mark would be far from a common or descriptive device as a whole.

In relevant industries, competitors often provide jackets and pants bearing their brand on the same position with the Hummel Chevron mark. If so, consumers are also accustomed to distinguishing a source of the goods by means of devices depicted on the position.

Bearing in mind that the applicant has been extensively and continuously using the position marks on their jackets and pants, presumably the marks have become famous as a source indicator of the applicant among relevant consumers.

Besides, the Board could not find any evidence of a common use of the chevron device on the same position as a decorative or functional indication.

Based on the foregoing, the Board held that relevant consumers would recognize the position marks as a source indicator. If so, the examiner made an error in finding distinctiveness of respective mark. Therefore, the Board disaffirmed the examiner’s rejection and decided in favor of Hummel Holding AS consequently.

JPO rejection to Kubota Tractors’ Color Marks

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On October 31, 2023, the Japan Patent Office (JPO) rejected color marks for use on farm tractors by KUBOTA Corporation due to a lack of inherent and acquired distinctiveness in relation to farm tractors in class 12.

Kubota farm tractors

KUBOTA Corporation, established in 1890, a Japanese company manufacturing a wide range of agricultural machines, launched its farm tractors in 1960. According to the allegations, KUBOTA has used an orange color and black-and-orange colors on its farm tractors since 1980. In recent years, the tractors have occupied top market share of around 50% in Japan.

https://www.kubota.com/products/tractor/index.html

On December 26, 2018, KUBOTA applied for registration of color marks (see below) consisting of an orange color and color combinations (orange and black / orange, black and white) with the JPO in relation to farm tractors of class 12.

JPO rejection

The JPO examiner rejected the applications based on Article 3(1)(iii) of the Japan Trademark Law and found every color mark does not satisfy requirements of Article 3(2) by stating that:

  1. Farm tractors with similar color have been distributed by several competitors. Orange color has been commonly used on other agricultural machinery. Under the circumstances, there is no distinctive character to apply and use the applied color(s) on body, front grill, wheels of farm tractors. If so, the color marks are deemed descriptive in relation to the designated goods and shall be rejected based on Article 3(1)(iii).
  2. The market research that targeted 589 consumers resulted in approx. 30% of the interviewees answering “KUBOTA”. The result is insufficient to admit the color(s) per se has acquired distinctiveness as a source indicator because more than 30% associated the mark with other competitors in spite that Kubota’s tractors have occupied top market share for long years.
  3. In view of the fact that orange corresponds to one of safety colors determined by the Japan Industrial Standards (JIS), there is a high demand to freely use the color in our society.
  4. Based on the foregoing, the examiner has no reason to believe the applied color marks have acquired a secondary meaning and played a role in identifying the source of Kubota’s farm tractors by itself.

Japan IP High Court ruled “athlete Chiffon” descriptive in relation to hotel and restaurant services.

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On October 12, 2023, the Japan IP High Court affirmed the JPO refusal decision to TM App no. 2021-93231 for word mark “athlete Chiffon” in class 43 due to a lack of distinctiveness.

[Court case no. Reiwa5(Gyo-ke)10038]

JPO refusal decision

Disputed mark, consisting of two words “athlete” and “Chiffon” in standard character, was filed for use of providing temporary accommodation; accommodation bureaux services; providing foods and beverages in class 43 with The Japan Patent Office (JPO) on July 27, 2021 (TM App no. 2021-93231).

The JPO examiner rejected the mark based on Article 3(1)(iii) and Article 4(1)(xvi) of the Japan Trademark Law by stating that relevant consumers at sight of the disputed mark would merely conceive of a restaurant to provide Chiffon cakes for athletes and it will cause misrepresentation of a particular quality of service when used on other services.

Applicant filed an appeal against the examiner’s rejection. However, the JPO Appeal Board sustained the examiner’s findings and decided to refuse the disputed mark on March 22, 2023.

Appeal to the IP High Court

On April 20, 2023, the applicant filed a lawsuit to dispute registrability of the disputed mark with the IP High Court and asked the court to annul the JPO decision based on the facts that the JPO has allowed registration of lots of trademarks containing the term “athlete”, but none of them restrict its usage of designated goods or services “for athletes”. Cake shops containing a term “Chiffon” in their trade name have even delt with cakes other than chiffon. If so, the JPO obviously made an error in denying distinctiveness of respective term “athlete” and “Chiffon”. Because of it, the JPO refusal decision shall be cancelled.

IP High Court decision

From the produced evidence, the IP High Court found that, in the industry of foods and beverages, terms such as “athlete cake” and “athlete pan cakes” are commonly used to indicate special goods and service for athletes. If so, relevant consumers and traders would consider a term consisting of “athlete” followed by generic word of goods or service as an indication to specify the target of the goods or service (for athletes). “Chiffon” is known in the industry as a term to indicate ‘food that is made light by adding the clear part of eggs that have been beaten’ and commonly used in conjunction with other descriptive term, e.g., “Choco chiffon”, “banana chiffon”, “Valentine chiffon”.

Under the circumstances, the court has a reason to believe that relevant consumers would consider the term “athlete Chiffon” as a mere descriptive indication of the restaurant to provide chiffon (cakes) for athletes when used in relation to the service in question.

Screen capture from “athlete Chiffron” facebook page

A fact that several cake shops containing a term “Chiffon” in their trade name have delt with cakes other than chiffon is irrelevant to the case given the consumers conceive of chiffon cake at sight of the term “athlete Chiffon” when used on restaurant service.

Based on the foregoing, the court held the JPO did not make any error in finding facts and applying trademark law and thus the disputed mark shall be unregistrable under Article 3(1)(iii) and 4(1)(xvi).

Japan IP High Court Decision to A Position Mark of Dr. Martens’ Yellow Welt Stitch

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On August 10, 2023, the Japan IP Hight Court ruled to dismiss an appeal by Airwair International Limited to the JPO’s rejection against a position mark for Dr. Martens’ Yellow Welt Stitch.

[Court case no. Reiwa 5(Gyo-ke)10003]

Dr. Martens’ Yellow Welt Stitch

Airwair International Limited, a UK company, applied a position mark consisting of a yellow stitching around the perimeter of footwear on the outer sole edge (see below) for use on leather shoes and boots in class 25 with the JPO on June 12, 2018 (TM App no. 2018-77608).

Allegedly, first use of the position mark on the Dr. Martens “1460” boots has dated back to 1960 in UK. Leather shoes and boots bearing the yellow welt stitch have been continuously distributed in Japan by the applicant or a local subsidiary (Dr. Martens Japan) via company store (61 shops at present) and major shoes retailers since 1985. Recent annual sales for Dr.  Martens’ shoes in Japan exceed 6 billion Japanese yens and over 460,000 pairs. Airwair has routinely monitored and taken legal actions against lookalikes of shoes bearing the yellow welt stitch and been successful in stopping distribution of following shoes.

According to the brand awareness survey that targeted a total of 1,019 men and women aged from 15 to 59, 30.7% of the interviewees who have purchased leather shoes and boots could answer Dr. Martens at the sight of black leather shoes with the yellow welt stitch and 37.6% selected Dr. Martens from multiple choice.

On August 23, 2022, The JPO Appeal Board decided the yellow stitching of Dr. Martens does not possess its own distinctive character by stating that relevant consumers would not see the stitch as a source indicator, but as a mere decoration. The Board also negated acquired distinctiveness of the position mark based on the fact that a majority of frequent users of the goods in question could not connect the stitch with Dr. Martens. Accordingly, the Board sustained the examiner’s rejection (Appeal case no. 2021-2446).

Airwair filed an appeal against the JPO Appeal Board decision and argued inherent and acquired distinctiveness of the Dr. Martens’ yellow welt stitch in relation to leather shoes and goods.

IP High Court decision

Inherent distinctiveness

The Court paid attention to the circumstance that plenty of leather shoes and boots have been manufactured by means of the Goodyear Welted Method for long years and the thread stitched to attach the upper to the sole has often identical or similar color to the upper and sole. If so, in relation to yellow-colored shoes, a yellow stitch would be anything but distinctive.

Bearing in mind that the applied mark does not specify a color of the upper and the sole, the judge had a view that it is allowed to assess inherent distinctiveness of the position mark in relation to the shoes with a yellow thread, upper and sole and any colors.

Based on the foregoing, the Court found the position mark lacks inherent distinctiveness in relation to leather shoes and boots and shall be unregistrable based on Article 3(1)(iii) of the Trademark Law.

Acquired distinctiveness

The Court questioned relevance of the brand awareness survey that excluded consumers who had not purchased either leather shoes or boots in the past year. However, by taking account of an expert opinion that points out 15% shall be sufficient to admit distinctiveness of trade dress as a source indicator especially in fashion industry and the survey revealed there were over four times as many interviewees who selected Dr. Martens than Timberland (7.9%) from multiple choice, the judge ruled Dr. Martens’ yellow welt stitch has acquired a certain degree of recognition as a sign that the black leather shoes originate from the Airwair company.

In the meantime, the Court held there is doubt if the position mark would play a role in indicating its source even when used on a yellow or similar colored outsole or welt. As a matter of fact, Airwair has not taken actions against shoes having non-black outsoles and welts.

Given the applied mark does not restrict a color of shoes, a fact that Dr. Martens’ yellow welt stitch has played a role of source indication in relation to black leather shoes and boots is insufficient to find acquired distinctiveness of the appled mark and admit registration under Article 3(2) of the Trademark Law.

Obviously, the Court opens a gate to register Dr. Martens’ yellow welt stitch provided that a position mark consists of yellow stich and black upper and welt.

CASIO Successful in Registering 3D Shape of “G-SHOCK” Watch

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The Japan Patent Office (JPO) disaffirmed the examiner’s rejection and granted protection to the 3D shape of the Casio “G-Shock” watch by finding acquired distinctiveness as a result of substantial use over the past four decades.

[Appeal case no. 20212-11052, Gazette issued date: June 30, 2023]

CASIO “G-SHOCK” Watch

On April 28, 2021, Casio Computer Co., Ltd. filed a trademark application for the 3D shape of the first-released G-Shock, the DW-5000 (see below) to be used on ‘watches’ in class 14 with the JPO (TM application no. 2021-52961).

Rejection by JPO Examiner

On April 11, 2022, the JPO examiner rejected the 3D mark based on Article 3(1)(iii) of the Japan Trademark Law.

In the rejection, taking into consideration various decorations or patterns on the belt and case of wristwatches by other watchmakers (see below), the examiner considered the 3D shape of the applied mark lacks distinctiveness as a source indicator of wristwatch because relevant consumers and traders would recognize it simply represents a common shape of wristwatch adopted to enhance aesthetic function and psychological effect on the goods in question.

The examiner negated the acquired distinctiveness of the 3D shape of “G-Shock”, the DW-5000 regardless of continuous use on Casio’s wristwatches for 40 years on the grounds that:

  1. On the goods, catalogs, and advertisements, wordmarks “CASIO” and “G-SHOCK” have been constantly used as well.
  2. The “G-Shock” wristwatch collection has a lot of models that have a different appearance from the applied 3D shape.
  3. The market research that targeted a total of 1,100 men and women aged over 16 resulted in 55.52% of the interviewees answering “Casio” or “G-Shock” to an open-ended question when shown the 3D shape of the DW-5000. The percentage is insufficient to admit the 3D shape per se has acquired distinctiveness as a source indicator.
A screen shot from casio.com

On July 15, 2022, Casio filed an appeal against the rejection and disputed the acquired distinctiveness.

JPO Appeal Board decision

The Appeal Board affirmed the examiner’s finding in applying Article 3(1)(iii) of the Trademark Law.

In the meantime, the Board paid attention to the fact 66.27% of the interviewees selected “Casio” or “G-Shock” to a closed-ended question, where it mentions G-Shock along with other close competitors.

Provided that more than 60% of consumers associate the 3D shape with Casio or G-Shock, and the shape has the reputation as a representative model of the G-Shock with its unique shock-resistance form, the Board has a reason to believe the 3D shape per se has acquired a substantial degree of recognition among relevant consumers and played a role in source indicator of Casio’s wristwatches. If so, the examiner errored in applying Article 3(2) of the Trademark Law.

Based on the foregoing, the Board decided to cancel the examiner’s rejection and admitted registration of the applied mark exceptionally based on Article 3(2).