タグ: inherent distinctiveness

JPO Rejected Colormark of Louboutin’s red soles

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On June 7, 2022, the Appeal Board of the Japan Patent Office (JPO) decided to reject a red color mark used on the soles of high heels by Christian Louboutin due to a lack of inherent and acquired distinctiveness.

[Appeal case no. 2019-29921]

Louboutin’s Red Soles

Fast on the heels of the introduction to register color marks in Japan, Christian Louboutin filed a trademark application for a color mark consisting of a red (Pantone 18-1663TP) colored in soles (see below) for use on high heels in class 25 on April 1, 2015 (TM App no. 2015-29921).

The JPO examiner refused the color mark based on Article 3(1)(iii) of the Japan Trademark Law by stating red color has been commonly used on shoes to enhance the aesthetic appearance and attract consumers of high heels. Red-colored heels and shoes have been widely distributed before the launch of Louboutin shoes in 1996 in Japan and even now. Under the circumstance and trade practice, the examiner had no reason to believe the color mark perse has acquired distinctiveness as a source indicator of Louboutin among relevant consumers in Japan. If so, the mark shall not be registrable under Article 3(2).

Louboutin filed an appeal against the refusal and disputed the inherent and acquired distinctiveness of Louboutin’s red soles as a color mark on October 29, 2019.

To bolster the acquired distinctiveness of the red soles, Louboutin conducted an online brand awareness survey to target 3,149 females, aging from 20 to 50 and having a domicile in Tokyo, Osaka, or Nagoya where Louboutin have stores. The survey demonstrated that 43.35% of the interviewees conceived of Louboutin in the answer to an unaided open-ended question (Q1). 53.99% associated the color mark with Louboutin in the answer to a closed-ended question, where it mentioned Louboutin along with other close competitors (Q2). Louboutin argued, that from the survey, it is obvious that Louboutin’s red soles have acquired distinctiveness among relevant consumers and shall be registered under Article 3(2) even though lacking inherent distinctiveness.

JPO Appeal Board decision

The Appeal Board affirmed the examiner’s findings and found the color mark perse lacks distinctiveness in relation to the goods in question by taking into account of fact that a lot of shoes with red-colored soles have been distributed by other shoemakers in Japan.

In the assessment of acquired distinctiveness, the Board pointed out a fact that more than half of the interviewees who live in the region where Louboutin stores are could not conceive of Louboutin in the answer to Q1. The survey was insufficient to admit acquired distinctiveness of the applied mark among relevant consumers nationwide, the Board found.

Even among the consumers who could associate the color mark with Louboutin, the Board had an opinion that as a matter of fact, they will be unable to distinguish Louboutin high heels from competitors’ shoes simply by means of red-colored soles without the aid of another source indicator, a wordmark “Louboutin”, used on the shoes given a lot of red-soled heels and shoes have been distributed by competitors as follows.

Besides, under the current trade practice, the Board considered it will inevitably cause a severe disorder and excessive restriction to competitors if it allows registration of a red color that has been freely used in the relevant industry to enhance the aesthetic appearance of shoes.

Based on the foregoing, the JPO concluded the color mark shall not be registrable under Article 3(2) as well.

Update of Colormark in Japan – Who awarded the 9th registration?

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On March 25, 2022, the Japan Patent Office (JPO) granted protection of a color mark that has been used on the package of the first and a long-selling Japanese instant ramen “Nissin Chicken Ramen”. It is the 9th case for JPO to admit registration since opening the gate to color mark in April 2015.

Nissin Chicken Ramen

In 1958, NISSIN FOODS founder Momofuku Ando invented the world’s first instant noodles: Chicken Ramen, paired with a rich broth made of chicken and vegetables.

Nissin Chicken Ramen is a long-selling Japanese instant ramen loved by many generations and considered the world’s first instant noodles. According to the company’s release, more than 5 billion packages of Chicken Ramen had been sold.

Color mark on Package

The JPO opened the gate to Non-Traditional trademarks, namely, color, sound, position, motion, and hologram, in April 2015.

On July 12, 2018, Nissin Foods sought for registration of color combination on the Chicken Ramen package on instant noodles in class 30.

JPO examiner raised his objection because of a lack of distinctiveness based on Article 3(1)(iii) of the Trademark Law. However, the examiner eventually granted protection by finding acquired distinctiveness of the color mark (TM Reg no. 6534071).

Low Success rate -1.6%

563 color marks have participated in a race for trademark registration at the JPO as of now (May 14, 2022). 9 color marks could manage to award registration.

It is noteworthy that none of them is a mark consisting of a single color.

A previous post relating to colormark is accessible from here.

JPO Found Lego 3D Figure Mark Lack Distinctiveness

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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).

Hermes Challenge to Register Packaging Colors

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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.

Formula One Successful in Registering “F1”

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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.

“FS12” can’t be registered due to a lack of distinctiveness

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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.

Japan IP High Court Ruling on Distinctiveness of Position Mark

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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.

Japan IP High Court Refuses Trademark Protection for Orange Color Mark

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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).

Click here to see the court decision in Japanese.

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.

Japan IP High Court ruling: “I♡JAPAN” lacks distinctiveness as a trademark

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On June 17, 2020, the Japan IP High Court affirmed the JPO’s rejection of the “I♡JAPAN” mark in relation to various goods of class 14,16,18 and 24 due to a lack of distinctiveness.
[Judicial case no. Reiwa 1(Gyo-ke)10164]

I♡JAPAN

The disputed mark consists of the capital letter “I”, followed by a red heart symbol, below which are the capital letters “JAPAN” (see below). The mark filed by CREWZ COMPANY, a Japanese merchant on April 17, 2018, over various goods in class 14, 16, 18, and 24 [TM application no. 2018-049161].

Noticeably, the JPO already allowed trademark registration for the same mark on apparels in class 25 on March 27, 2015, filed by the applicant [TM Registration no. 5752985]. Regardless of it, the examiner refused disputed mark in contravention of Article 3(1)(vi) of the Trademark Law.

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.

JPO decision

The JPO Appeal Board sustained the examiner’s refusal and decided to reject disputed mark by stating that we are nowadays accustomed to finding goods bearing the “I♡” logo followed by a geographical indication, which represents a strong devotion or attachment to the area/city in its entirety. In fact, the “I♡JAPAN” design is commonly used on several goods as a symbol to support the Japanese sports team or souvenirs for tourists. If so, the design shall not be exclusively occupied by a specific entity. Under the circumstances, relevant consumers are unlikely to conceive the disputed mark as a source indicator of the applicant. Thus, the mark shall be rejected in contravention of Article 3(1)(vi) and the examiner did not error. [Appeal case no. 2018-16957]

To contend against the decision, the applicant filed an appeal to the IP High Court.

IP High Court ruling

The IP High Court dismissed the applicant’s allegation entirely, stating that the disputed mark gives rise to the meaning of “I love JAPAN”. The court found the “I♡” logo followed by a geographical indication is commonly used to appeal a strong devotion or attachment to the area/city. Inter alia, various merchants promote goods bearing the “I♡JAPAN” design as a sign of their support to Japan or the Japanese sports team. If so, relevant consumers and traders would not conceive disputed mark as a source indicator of goods in question, but merely a symbol to represent their devotion and support to Japan. Therefore, the disputed mark shall not be registrable under n contravention of Article 3(1)(vi).

Besides, the court found the fact of a precedent registration for the same mark in a different class would not affect the distinctiveness of disputed mark since it does not have a legal effect to bind subsequent examination in assessing registrability of a junior mark under Article 3(1)(vi).

Sweet, but long road to register “Ghana” on chocolates

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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”.