In March 17, 2017, Japanese jewelry house TASAKI & Co., Ltd., the Japanese leading producer of Akoya pearls, filed an application for trademark registration at the Japan Patent Office (JPO) for the following three-dimensional mark for rings in class 14.
Signature ring featuring a row of five seemingly identical Akoya pearls
Applied mark represents a signature ring featuring a row of five seemingly identical Akoya pearls, one of Tasaki’s bestsellers.
Tasaki commenced sales of the ring in the name of “balancing signature ring” in April, 2010 and has been continuously promoting the sales since then.
JPO Examination/Acquired distinctiveness
The JPO examiner totally refused the mark due to a lack of inherent distinctiveness in relation to rings [jewelery].
Tasaki filed an appeal against the decision and argued acquired distinctiveness of the 3D configuration of the ring arising from uniqueness of its shape and substantial advertisement.
According to the filed evidences to the JPO, Tasaki installed a large signboard for advertisement at busy places, Ginza (Tokyo), Kobe, Osaka and made various promotional activities via internet, direct mails and events. The ring was appeared and published in magazines more than 130 times for the last eight years.
In March 1, 2019, the Appeal Board of JPO granted trademark registration based on Article 3(2) of the Trademark Law by finding acquired distinctiveness of the 3D configuration of the ring as a source indicator of Tasaki regardless of a fact that only 2,242 rings were purchased by consumers in fact .
[Appeal case no. 2018-9531, TM Registration No. 6125506]
Article 3(2) is a provision to allow registration of applied mark if, as a result of substantial use of the mark in fact, consumers are able to connect the mark with a source indicator of designated goods or services.