JPO Found Lego 3D Figure Mark Lack Distinctiveness

In a decision to the appeal against refusal to TM App no. 2017-138422 for the 3D shape of Lego figures in class 28, the Japan Patent Office (JPO) did not side with Lego Juris A/S and found the 3D mark is inherently descriptive and has not acquired distinctiveness in relation to toys.

[Appeal case no. 2019-13906, Decision date: January 6, 2022]

LEGO 3D Figure mark

Toy giant, Lego Juris A/S applied to the JPO to register a 3D mark, showing the Lego figure seen from the front, side, back, top, and beneath (see below), for “games and playthings” and other goods in class 28 on October 20, 2017.

Article 3(1)(iii)

Trademark Examination Guideline (TEG) pertinent to Article 3(1)(iii) of the Japan Trademark Law provides a mark shall be subject to the article if it solely consists of a shape that is recognized by consumers as a shape of goods or equivalent, namely “not go beyond the scope of the descriptive shape of goods”.

TEG stipulates criteria to assess the recognition.

  1. Where 3D shape is admittedly adopted for a purpose of enhancing function or the aesthetic appeal of goods, the shape is deemed to remain within the scope of descriptive shape of goods.
  2. Even though 3D shape has specific features by means of unique alteration or decoration, it is still considered not to go beyond the scope of descriptive shape of goods, where consumers assume such alteration or decoration attributable to enhancing function or the aesthetic appeal of goods.

The JPO examiner totally rejected the applied mark based on the article by finding the shape remains the scope of the descriptive shape of ‘human figure toys’ in class 28.

Lego Juris A/S filed an appeal against the rejection on October 18, 2019.


JPO decision

The JPO Appeal Board affirmed the findings of the examiner and found the 3D mark does not go beyond the scope of the descriptive shape of the goods in question by stating that:

  1. Plenty of human shape figures have been promoted for sale by competitors in relevant business field.
  2. There is less necessity to adopt specific configuration in making a human shape figure provided that it has a basic skeleton of head, body, arms, and legs.
  3. The Board has a reason to believe 3D shape of the applied mark is adopted enabling (i) to wear several caps and hair wigs, (ii) to get hold of various tools at hand, (iii) to stand still in display and play.
  4. If so, relevant consumers would assume the whole shape and its unique decoration of Lego figure attributable to enhancing function or the aesthetic appeal of the toy.

Taking into consideration that the actual 3D shape of Lego figures are considerably different from the applied mark, and the word mark “LEGO” has been constantly used on catalogs, packages, and advertisement material adjacent to the applied mark, the Board has a reasonable doubt if the 3D shape per se has acquired distinctiveness as a source indicator of LEGO toys.

Based on the foregoing, the JPO Appeal Board decided to dismiss the appeal in contravention of Article 3(1)(iii).

JPO protects 3D shape of cherry design bottle for soy sauce dispenser

In a recent administrative decision, the Japan Patent Office (JPO) found 3D shape of cherry design bottle is inherently distinctive in relation to soy sauce dispensers in class 21 even without secondary meaning.
[Appeal case no. 2019-7188, Gazette issue date: March 27, 2020]

3D shape of cherry design bottle

RISU Co., Ltd. filed a trademark application for three-dimensional shape of soy sauce bottle featuring cherry designs (see below) in relation to say sauce dispensers of class 21 on July 20, 2017 (TM Application no. 2017-96914).

From appearance, the 3D shape does not differentiate from an ordinary soy sauce dispenser except cherry designs in red encircling a clear cylindrical plastic bottle.

As a matter of fact, RISU Co., Ltd. has produced various plastic products for home use as well as cherry patterned table top condiment containers.

Article 3(1)(iii)

The JPO examiner rejected registration of the 3D mark on the ground that relevant consumers would not conceive the shape as a source indicator in relation to soy sauce dispensers since there exists similar goods depicting decorative patterns and colors to aim at attracting their attentions. The mark merely represents a shape of designated goods in a common manner and thus is not eligible for registration based on 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, applicant filed an appeal on June 3, 2019.

Appeal Board’s decision

The Appeal Board disaffirmed examiner’s rejection of the 3D shape by stating that:

Figurative elements depicted on a clear plastic cylindrical bottle would be rather perceived as a distinctive device created on a cherry motif, than a decoration for the purpose of enhancing function or aesthetic appeal of goods in question. If so, the 3D shape per se is deemed to play a role of source indicator sufficiently. It is obvious that examiner errored in finding distinctiveness of the 3D shape.

Thus, the 3D mark is eligible for registration in connection with soy sauce dispensers of class 21 even without finding secondary meaning because of inherent distinctiveness of the shape.

Acquired distinctiveness for 3D shape of OMRON digital thermometer

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.

Appeal Board’s decision – Acquired Distinctiveness

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]

IP High Court denied registering 3D Shape of Nursing Care Bed

The Japan IP High Court, in its ruling on November 29, 2018, did not side with Paramount Bed Co., Ltd., a Japanese manufacturer and distributor of medical and nursing care product, who filed an appeal against refusal decision by JPO to TM Application no. 2015-29155 for 3D mark representing the shape of home care bed.
[Case No. Heisei 30 (Gyo-ke) 10060]

 

3D shape of home care bed

Disputed mark, representing three-dimensional shape of nursing care bed, was filed on March 31, 2015 by designating nursing care bed and mattress in class 20. The Japan Patent Office (JPO) refused the mark due to a lack of distinctiveness.

Paramount Bed argued acquired distinctiveness as a source indicator of Paramount nursing care bed through substantial use of the mark and its unique shape.
According to the argument, Paramount has distributed more than 145,000 sets of nursing care bed and mattress which 3D shape is identical with the applied mark. The company spent USD 2,400,000 to advertise the bed in newspaper and USD 20,000,000 in TV commercial during the past five years. Paramount produced on-line questionnaire results which showed more than 60 % of relevant traders have recognized the shape as a series of Paramount Bed.

 

IP High Court ruling

The IP High Court dismissed the allegation entirely, stating that the produced evidences are unpersuasive to conclude the 3D shape acquired distinctiveness as a source indicator of Paramount Bed’s business because of below-mentioned reasons.

  1. As long as nursing care beds are likely to be used by general public, questionnaire results answered by traders are insufficient to demonstrate acquired distinctiveness among relevant consumers.
  2. Given the shape of applied mark occasionally appears while nursing care bed is in operation and the bed has coverlet on it in ordinary days, it is questionable whether relevant consumers have perceived the shape of applied mark per se as a source indicator.
  3. Besides, catalogs and advertisements pertinent to Paramount nursing care bed show configurations of the bed other than the shape of applied mark.

Based on the foregoing, the court upheld JPO decision.

It is just a 3D shape of electronic baccarat shoe, or trademark?

In a lawsuit disputing adequacy of decision by the JPO Appeal Board (Appeal case no. 2015-907) to refuse the applied 3D mark (TM2014-5943, class 28), consisting of a three-dimensional shape of electronic baccarat shoe with the program enabling to reduce the chance of foreign cards and eliminate dealer mistakes, due to lack of  distinctiveness and secondary meaning, the IP High Court sustained the decision being appealed.
[Case no. Heisei28(Gyo-ke)10266,  Decision date: September 27, 2017]

Inherent distinctiveness of the 3D shape

Plaintiff, a Japanese manufacturer and distributor of the ANGEL EYE electronic baccarat shoe, asserted that the 3D shape of ANGEL EYE, being the first products in the industry, is not an essential shape to make it free for public use since no competitors have dealt with same type of product other than plaintiff so far. Besides, a fact that the 3D shape has been registered in the legal gambling countries, e.g. US, EU, AU, RU, Malaysia and NZ, will rather bolster necessity to allow exclusive right on the shape.

However, the Court opposed to plaintiff. “It is inadequate to allow plaintiff to use the 3D shape exclusively. Applied 3D mark can be perceived objectively as a general shape of electronic baccarat shoe aimed to fulfill its original function and produce aesthetic image. If so, it may disorder a fair marketplace to allow exclusive use to plaintiff just because of a first-to-file. A mere fact of trademark registrations in countries where the ANGEL EYE has been distributed is insufficient to admit trademark registration in our nation since the goods is yet to be distributed in Japan.” Accordingly, the Court refused Applied 3D mark based on Article 3(1)(iii).

 

Secondary meaning of Applied 3D mark

Plaintiff argued Applied 3D mark has already served to function as a source indicator by means of substantial use of the mark sine 2005. Plaintiff exported 11,481 units (sale proceeds: 2.7 billion yen) over the lase decade and has achieved 90 % market share in Macau, the world’s largest casino gambling hub.

In this respect, the Court ruled in favor of the JPO. As plaintiff admits, the shoe has not been manufactured for domestic use. Any evidence suggesting a high degree of recognition to Applied 3D mark in foreign countries is neither relevant nor persuasive. Unless plaintiff demonstrates that domestic consumers have become aware of such recognition, it is groundless to find Applied 3D mark would satisfy requisite of secondary meaning based on Article 3(2) of the Japan Trademark Law.


The case raises a question: What is a role of the Trademark Law where applied mark, being registered in foreign nations,  confronts with an insuperable refusal attributable to legal restrictions on domestic use of the mark?
Unsuccessful domestic registration prevents domestic company from utilizing the Madrid Protocol and protecting his/her vital brands on the global market in an effective and economical manner.