タグ: Acquired distinctiveness

Porsche wins trademark protection for “911”

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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.

  1. 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.
  2. Recent domestic sales show 1,420 cars in 2016, 1,543 cars in 2017.
  3. Press release, news articles, catalogs and advertisements on magazines and newspapers featuring Porsche count to approximately 300 per year from 2010 to 2014.
  4. 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.

The Japan IP High Court Finds “EQ” Entitled to Trademark Registration Belonging to Mercedes Benz

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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:

  1. 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”.
  2. 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.
  3. 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+”.
  4. 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.
  5. 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.

Trademark registration for Tasaki’s Akoya pearls ring

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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.

JPO refused to register 3D shape of Mitsubishi Electric’s spiral escalator

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The Appeal Board of Japan Patent Office (JPO) disallowed registration of 3D shape of Mitsubishi Electric’s spiral escalator due to lack of inherent distinctiveness and secondary meaning in relation to escalators, class 7. [Appeal case no. 2017-6855]

Spiral escalator

Mitsubishi Electric Corporation first developed the spiral escalator in 1985, and has been the world’s first and sole manufacturer of spiral escalators. Spiral escalator is a special design type of escalator in the form of a spiral/helical with curved steps.
On May 3, 2016, Mitsubishi Electric filed a trademark application for 3D shape of spiral escalator (see below) by designating escalators in class 7 to the JPO [TM application no. 2016-23374].

The JPO examiner totally refused the application based on Article 3(1)(iii) of the Japan Trademark Law stating that the applied mark can be easily seen as a 3D shape of escalator and the shape does solely consist of a common configuration to achieve the basic function of escalator. If so, the applied mark lacks distinctiveness as a source indicator.

To dispute the refusal, Mitsubishi Electric filed an appeal on May 12, 2017.

Appeal Board’s decision

The Appeal Board, however, upheld the examiner’s decision on the ground and dismissed Mitsubishi’s allegation by stating that relevant consumers and traders shall conceive of an escalator designed to enhance its function or sensuousness at the sight of applied mark.

Acquired distinctiveness

Mitsubishi Electric also argued that even if the applied mark is deemed descriptive in relation to escalators, it shall be registrable based on Article 3(2) due to acquired distinctiveness of the mark because Mitsubishi Electric Spiral Escalators has achieved 100 % market share in the world and continuously used the 3D shape on escalators for more than three decades.

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.

Under the totality of the circumstances, the Appeal Board dismissed the allegation as well.

The Board found that regardless of 100 % market share in the category of spiral escalators, Mitsubishi Electric’s domestic supply record of 24 units in the last thirty years shall be a trivial quantity in comparison with total number of escalators in operation. Besides, questionnaire result rather shows a source of the applied mark is unknown to more than 60% of the questionee.

Based on the foregoing, the Board questioned whether applied mark has acquired distinctiveness through actual use in relation to escalators and consequently refused to register the mark based on Article 3(1)(iii) and 3(2) of the Trademark Law.

Trademark registration for Kikkoman’s Soy sauce 3D Bottle

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In October 11, 2016, Kikkoman Corporation, the world’s leading producer of soy sauce, filed an application for trademark registration at the Japan Patent Office (JPO) for the following three-dimensional colored mark for soy sauce in class 30.

Red-capped Kikkoman soy sauce dispenser

Iconic red-capped Kikkoman soy sauce dispenser was introduced in 1961 and has been in continuous production ever since. It was developed by Kenji Ekuan, a Japanese Navy sailor former naval academy student who dedicated his life to design when he left the service. Its unique shape took three years and over a hundred prototypes to perfect, but the teardrop design and dripless spout have become a staple of restaurant condiments all around the world. The bottle’s design hasn’t changed over the past 50 years.

JPO Examination/Acquired distinctiveness

The JPO examiner initially notified her refusal due to a lack of inherent distinctiveness in relation to say sauce.

In a response to the office action, Kikkoman argued acquired distinctiveness of the 3D bottle arising from uniqueness of its shape and substantial use for over five decades.

According to news release from Kikkoman, over 500 million of the bottles have been sold since the design was first introduced and distributed in approximately a hundred countries worldwide. Red-capped Kikkoman soy sauce dispenser has already been registered as 3D mark in US, EU, Ukraine, Norway, Russia, Australia.

In March 30, 2018, the JPO granted trademark registration based on Article 3(2) of the Trademark Law by finding acquired distinctiveness of the 3D color mark as a source indicator of Kikkoman.
[TM Registration No. 6031041]

 

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

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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.