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.
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 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]
In a dispute of registrability to a unique
three-dimensional shape of giant cotton candy, the Appeal Board of Japan Patent
Office (JPO) refused protection of the 3D mark due to lack of distinctiveness.
[Appeal case no. 2017-9666, Gazette issue date: September 27, 2019]
TOTTI CANDY FACTORY
If you ever visit Harajuku (Tokyo) chances
are you will spot people carrying around gigantic pastel-colored cotton candy. When
you think of cotton candy, a balloon-size blob of sticky blue or pink fluff
probably comes to mind. But this cotton candy is here to rewrite any
preconceptions you have about the treat, because not only does it come in the
most beautiful shades of pastel you’ve ever seen, it’s also legitimately larger
than your head. It’s so big, it’s actually hard to take a cute picture holding
it — because it blocks your entire face with its pretty rainbow hues.
You can find this giant rainbow cotton candy at a sweet shop popular with young people in Harajuku, Totti Candy Factory.
3D shape of the cotton candy was applied
for registration with JPO in respect of confectionery (class 30) on May 20,
2016. [TM application no. 2016-54840]
Registrability of 3D shape mark
The shape of a product can be an important element that generates value for a company. For this reason, the protection of three-dimensional forms is of commercial interest. Three-dimensional trademarks include the shape of a product or its packaging. Prior to 1996, there was no proper statutory provision that recognized three-dimensional shapes as trademarks. 1996 revision to the Trademark Law recognized 3D shape trademarks such as the shape of the packaging and specific product shapes. Now, a Trademark Registration can be attained for any distinctive three-dimensional shapes, that discern the goods or services of one business from those of other businesses, under the Japan Trademark law.
JPO Examination
JPO examiner entirely rejected the 3D shape mark by stating that:
“Appearance of the applied mark in color
can be perceived merely as an ordinary three-dimensional shape of cotton candy.
If so, the shape is deemed equivalent to a configuration solely consisting of
the shape of goods in a common manner to the extent that relevant traders
and/or consumers are unlikely to recognize the shape as a source indicator.
Hence, the mark is subject to Article 3(1)(iii) of the Trademark Law. From
the produced evidence, it is questionable whether the shape has acquired distinctiveness
as a result of substantial use.”
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, an owner
of Totti Candy Factory, filed an appeal on June 30, 2017.
Appeal Board’s decision
The Appeal Board affirmed examiner’s rejection
of the 3D shape based on lack of distinctiveness. As grounds for rejection, Board
cited following conical cotton candies in several colors distributed by third
parties.
In addition, the Board negated acquired
distinctiveness of the 3D shape by stating that:
Allegedly applicant has used applied mark on cotton candy since February 2015, however, he failed to produce objective evidence of its first use.
In general, cotton candy is consumed by individuals in a wide age range. If so, three brick-and-mortar shops at Harajuku (Tokyo), Shinsaibashi (Osaka), Nagoya PARCO (Aichi) are insufficient to demonstrate increased publicity among relevant consumers all over the country.
According to the produced sales record, from the period of February 2015 through June 2017 applicant sold 370,302 pieces of Giant Rainbow Cotton Candy, amounting to 200 million JP-yen in total sales. However, its market share remains unclear.
A fact that Totti Giant Cotton Candy has gotten popular with young women in their teens and early 20’s is insufficient to admit acquire distinctiveness of the 3D shape since consumers of cotton candy are not limited to young women.
Advertisement and publications of Giant Rainbow Cotton Candy contains a term “TOTTI CANDY FACTORY” or “Totti” adjacent to the 3D shape. From these evidences, it is questionable whether relevant consumers would conceive the 3D shape in itself as a source indicator of Totti Candy Factory.
Based on the foregoing, the Board
consequently refused to register the mark based on Article 3(1)(iii) of the
Trademark Law.
Porsche, a German sports car maker, has recently won trademark protection for its widely known three-digit code “911” in Japan. [Appeal case no. 2018-650044]
911 – a mark composed exclusively of
numerals
Dr. Ing. h.c. F. Porsche Aktiengesellschaft
filed a trademark application for three-digit mark “911” in standard character to
the Japan Patent Office (JPO) via the Madrid Protocol with a priority date of March
15, 2014, which is the international registration date for IR no. 1199656.
Evidently, the mark represents the famous Porsche
911, one of the greatest sportscar.
It starts in 1963. 911 was Designed as a
Rear Engined Luxury Sports Coupe from the get-go. Germans wanted to call it the
901. and that had been it’s factory code ever since it was in production. But Porsche
was forced to rename the model the ‘911’ after French Automaker Peugeot claimed
the name 901, having the {Number – Zero – Number}, was in violation of French
copyright and trademark protection laws.
On April 5, 2018, the JPO examiner refused
the 911 mark on the ground that it is descriptive for the designated goods ‘sports
cars’ in class 12 based on 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 numerals is not eligible for registration under the article. Click here.
A mark composed exclusively of numerals is deemed
uncapable of identifying the source of the goods since relevant public immediately
perceives, without further thought, a description of one of the essential
characteristics of the goods in question, such as their quantity or value.
The examiner had considered that since the
sign 911 can be used to indicate a value, code, type, model or standard, it
could be immediately perceived by the relevant public as descriptive of a
characteristic of the goods in question and not of their provenance from a
specific undertaking.
Numerals falling under the article are only
capable for registration based on Article 3(2) if they have “acquired
distinctiveness”, which means the term has taken on a meaning in the public
view so that people see the term as a trademark identifying the goods rather
than simply describing the goods.
In the appeal, Porsche argued the 911 mark in itself has already played a role of source indicator as a result of substantive use since 1964.
APPEAL BOARD Decision – Acquired Distinctiveness
JPO Appeal Board granted protection of the
911 mark, stating that the mark has acquired distinctiveness due to substantive
and continuous use with goods in question based on following fact-findings.
Appellant has used the 911 mark as a sports car brand of its high-end product since 1964 in Japan and been continuously distributing the sports car.
Recent domestic sales show 1,420 cars in 2016, 1,543 cars in 2017.
Press release, news articles, catalogs and advertisements on magazines and newspapers featuring Porsche count to approximately 300 per year from 2010 to 2014.
From the produced evidences, it could be seen that the 911 mark has been used in a separable manner with Porsche.
Thus, the Board found the applied mark in itself has been widely known for a source indicator of the famous Porsche 911 among relevant consumers of goods in respect of which an application for registration has been filed. If so, the 911 mark is exceptionally eligible for registration in connection with sports cars of class 12 based on Article 3(2) of the Trademark Law.
On July 3, 2019, the Japan IP High Court reversed a decision of the Japan Patent Office (JPO) finding that the company Daimler AG was entitled to registration of “EQ” for Motor vehicles in class 12, even though the term “EQ” by itself is descriptive for the goods. [Case no. Heisei31(Gyo-ke)10004, Daimler AG vs the JPO Commissioner]
The EQ Application
The JPO has refused registration to an application for EQ in standard characters (word only, see below) on the basis that the mark was descriptive for the goods “Motor vehicles” in class 12 based on Article 3(1)(v) of the Trademark Law.
The article prohibits an applied 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 is not eligible for registration under the article. Click here.
A mark consisting of two alphabetical
letters is not capable of identifying the source of the goods due to a lack of distinctiveness
because a combination of two alphabetical letters is limited on quantity and currently
used to represent a model name of vehicle, e.g. BMW XS, TOYOTA Carina ED, Ferrari
FX, Nissan GT-R.
Descriptive terms falling under the article
are only capable for registration based on Article 3(2) if they have “acquired
distinctiveness”, which means the term has taken on a meaning in the public
view so that people see the term as a trademark identifying the goods rather
than simply describing the goods.
In this regard, Daimler AG argued the EQ
mark, a coined term originating from “Electric Intelligence” to appeal design,
extraordinary driving pleasure, high levels of everyday suitability and maximum
safety of electric car by Mercedes-Benz, has acquired distinctiveness since launching
the brand at the Paris Motor Show in September 2016.
JPO Decision
However, the JPO dismissed the argument on
the grounds that:
Daimler has neither used the EQ mark by itself as a name of electric car nor produced evidences of its plan to sell electric car named “EQ”.
Daimler uses the EQ mark in a stylized design in press releases. If so, it is questionable whether relevant consumers conceive the EQ mark in standard characters as a source indicator of Mercedes-Benz.
According to the produced evidences, Daimler uses the EQ mark in combination with other literal elements, e.g. “Generation EQ Concept”, “Concept EQA”, “EQC”, “smart vision EQ for two”, “EQ POWER”, “EQ POWER+”.
There are no actual domestic sales of the electric car using the applied mark during the past two years from the date Daimler launched the brand in fact.
A combination of two alphabetical letters, “E” and “Q”, has been generally used as a mode name in association with vehicles, e.g. TOYOTA electric car “eQ”, HYUNDAI luxury sedan “EQ900”, Zhengzhou Nissan truck “EQ1060”, Laufenn tyre “S FIT EQ”, ALPINE car navigation “EX11Z-EQ”, SPECIALLIZED bicycle “ALIBI SPORT EQ”. If so, the EQ term shall not be eligible for monopoly by a specific entity any longer.
The Appeal Board of JPO also upheld the refusal. [Appeal case no. 2018-650016]
To contest the administrative decision, Daimler
AG filed an appeal to the IP High Court on January 15, 2019.
IP High Court Ruling
The court first found the EQ mark in standard characters is not eligible for registration under Article 3(1)(v) of the Trademark Law.
In the meantime, the court found Daimler has newly released, promoted, and used the EQ mark with a combination of “POWER” as a new brand concept of electric car by Mercedes-Benz. Given a space for single letter between “EQ” and “POWER”, relevant consumers at the sight of promotional materials, advertisements and car magazines pertinent to Mercedes-Benz’s new electric car brand would perceive “EQ” as a specific source indicator. Taking account of enormous number of circulation of magazines (approx. 230,000) and advertisements for users (170,000 per year), the court held the EQ mark has been well known for a source indicator of Daimler electric car among relevant consumers and traders even if the duration of actual use and sales amount are not sufficient by themselves.
Notably, the court also negated
fact-finding by JPO regarding ordinary use of the term EQ in association with
vehicles by stating that since competitors use the term in a tight combination
with other literal elements, they can be simply perceived as a mode name. If
so, such use shall not be construed to negate acquired distinctiveness of the
EQ mark by Daimler.
Based on the foregoing, the court ruled the EQ mark is entitled to trademark registration based on Article 3(2) of the Trademark Law and reversed a decision by the JPO on that account.
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.
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.
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.
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.
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.
