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.
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.
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.
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:
Plenty of human shape figures have been promoted for sale by competitors in relevant business field.
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.
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.
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).
On December 15, 2021, the Japan Patent Office (JPO) affirmed the examiner’s rejection to protect a wordmark “PATAGONIA” for seafood in class 29 and dismissed an appeal filed by Patagonia Inc. due to a lack of distinctiveness.
[Appeal case no. 2020-16786]
“PATAGONIA”
An American clothing company that markets and sells outdoor clothing, Patagonia Incorporated, filed a divided-trademark application for wordmark “PATAGONIA” in standard character on goods of ‘fresh, chilled or frozen edible aquatic animals (not live); blue mussels, not live; oysters, not live; processed seafood products; soups’ in class 29 on August 19, 2019 (TM Application no. 2019-110730).
The JPO examiner rejected the mark in contravention of Articles 3(1)(iii) and 4(1)(xvi) of the Japan Trademark Law on August 24, 2020.
The examiner asserted “PATAGONIA” refers to a geographical region that encompasses the southern end of South America and is a popular tourist destination for nature-lovers and adventure-seekers. Since Patagonia travel guides often have contents of Patagonia’s seafood, it is likely that relevant consumers and traders at the sight of seafood bearing the wordmark “PATAGONIA” with ordinary care would conceive the goods from the Patagonia region and see it as an indication of the origin of seafood.
If so, whenever the mark is used on seafood, not from the Patagonia region, it inevitably misleads the quality of goods.
Appeal by Patagonia Inc.
On December 7, 2020, Patagonia Inc. filed an appeal against the rejection and argued the term “Patagonia” is frequently accompanied by “region” or “sea” when used to indicate the origin of seafood because Patagonia is neither a nation nor a specific province but is a region comprising of all southerly Chile and Argentina. Being that the applied mark “PATAGONIA” has acquired a substantial degree of reputation and popularity in connection with apparel as a source indicator of Patagonia Inc., relevant consumers would rather conceive of a famous apparel brand at the sight of seafood bearing the mark “PATAGONIA.”
Besides, it is questionable if relevant consumers are familiar with the Patagonian Sea as an origin of seafood available in Japan.
JPO decision
The JPO Appeal Board found the mark “PATAGONIA” lacks distinctiveness in connection with the goods in question by stating that fish and seafood from the Patagonian Sea have been imported to Japan over the past three decades. The term “Patagonia” perse or its transliteration written in Japanese Katakana character has been used to indicate the origin of the goods. Under the circumstances, it is unquestionable that relevant consumers at the sight of seafood bearing the mark “PATAGONIA” would see it as an indication of the origin of the goods.
The Board did not question the famousness of the “PATAGONIA” mark in connection with outdoor-related goods. However, the Board denied the distinctiveness of the mark in relation to seafood even though Patagonia Inc. has promoted seafood for sale in Japan since 2016 because the mark in question is not used, but “PATAGONIA PROVISIONS”.
Based on the foregoing, the Board dismissed the entire allegations and decided to reject the mark in contravention of Article 3(1)(iii).
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.
The Japan Patent Office (JPO) overturned the examiner’s refusal and decided to register the “El Clasico” mark in connection with sporting activities, production of sports events, sports information services, and other services of class 41 by finding the term shall not be recognized as football matches between FC Barcelona and Real Madrid C.F. [Appeal case no. 2019-650060, Gazette issued date: October 30, 2020]
El Clasico
“El Clasico” is a magical phrase to make football fans passionate, emotional, and excited. The meaning of El Clasico is the Spanish name that is given to any football match between fierce Spanish rivals Real Madrid and Barcelona FC. The literal translation of El Clasico is ‘The Classic’. According to the Cambridge Dictionary, “El Clasico” is defined as ‘any of the games played between the football teams Real Madrid and Barcelona’. Being that this rivalry can be dated back to the 1930s and ever since then, it is one of the most viewed annual sporting events.
Liga Nacional de Fútbol Profesional, the administrator of the Spanish football league, aka LaLiga, applied for registration of the “El Clasico” mark (see below) in relation to sporting activities, production of sports events, sports information services, and other services of class 41 via the Madrid Protocol (IR No. 1379292).
On August 15, 2019, the JPO examiner refused the applied mark due to a lack of distinctiveness in contravention of Article 3(1)(iii) of the Trademark Law. Examiner asserted that the term “El Clasico” gets to be known as football matches between FC Barcelona and Real Madrid C.F. If so, relevant consumers would conceive that services bearing the applied mark just relate to football matches between two teams. In this respect, the applied mark shall not be registrable based on Article 4(1)(xvi) as well since the consumers would mistake its nature when used on service unrelated to football matches between two teams.
LaLiga filed an appeal against the refusal
on November 15, 2019.
JPO Appeal Board’s decision
The Appeal Board overturned the examiner’s decision by stating that relevant consumers and traders at the sight of the applied mark are unlikely to see the mark to represent football matches between indicate FC Barcelona and Real Madrid C.F. immediately when used on services in question.
Taking into account less familiarity with the Spanish language among relevant consumers in Japan and the literal meaning of ‘The Classic’, the Board found the term “El Clasico” would be conceived as a coined word in its entirety. Furthermore, the Board could not identify any fact that the term is commonly used to represent a specific nature or quality in connection with the services in question.
Based on the foregoing, the Board concluded
the refusal shall be disaffirmed since the examiner erroneously found the applied
mark “El Clasico”.
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 (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”.
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.
The Trial Board of Japan Patent Office (JPO) dismissed an invalidation petition by Swiss watch giant, Swatch against TM Reg. no. 5849925 for word mark “iWATCH” owned by U.S. tech giant, Apple Inc. [Invalidation case no. 2017-890071, Gazette issue date: January 31,2020]
iWATCH
Disputed mark, consisting of a word “iWATCH”
in plain block letters (see below), was applied for registration in the name of
Apple Inc. on April 25, 2014 in respect of watches, clocks and other goods in
class 14.
Immediately after registration on May 13,
2016, Swatch filed an opposition to challenge registrability of disputed mark
based on Article 3(1)(iii), 3(1)(vi), 4(1)(xi), 4(1)(xv), 4(1)(xvi) of the
Japan Trademark Law, but in vain. [Opposition case no. 2016-900234]
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, materials, efficacy, intended purpose,
quantity, shape (including shape of packages), price, the method or time of
production or use.
Article 3(1)(vi) is a comprehensive provision to prohibit any mark lacking inherent
distinctiveness from being registered.
Article 4(1)(xi) is a provision to refrain from registering a junior mark which is
deemed identical with, or similar to, any senior registered mark.
Article 4(1)(xv) provides that a mark shall not be registered where it is likely to
cause confusion with other business entity’s well-known goods or services, to
the benefit of brand owner and users’ benefits.
Article 4(1)(xvi) is a provision to prohibit registration of any mark likely to
mislead quality of goods or services.
Invalidation Trial
Japan Trademark Law provides a provision to retroactively invalidate trademark registration for specific grounds under Article 46 (1).
In an effort to argue against the
opposition decision, Swatch filed a petition for invalidation against disputed
mark on October 23, 2017. Swatch argued disputed mark “iWATCH” shall be invalid
because of following reasons:
Given disputed mark consists of
an alphabet letter “i” and a generic term in relation to a designated goods ‘watch’,
the mark can be merely perceived to indicate a value, code, type, mode or
standard of ‘watch’. If so, disputed mark shall be lack of distinctiveness and revocable
under Article 3(1)(vi) in relation to the goods.
Likewise, relevant consumers would
misconceive quality of goods when disputed mark is used on goods other than ‘watch’
in class 14, e.g. jewelry, key holders, jewelry boxes, accessories. If so,
disputed mark shall be revocable under Article 4(1)(xvi) in relation to goods other
than ‘watch’.
Disputed mark “iWATCH” resembles
“SWATCH” from visual and phonetic points of view. It is unquestionable SWATCH has
become remarkably famous for watches and fashion items of Swatch Group. If so, a
likelihood of confusion will arise between “iWATCH” and “SWATCH” when disputed
mark is used on goods in class 14. Thus, disputed mark is revocable under
Article 4(1)(xi).
Board Decision
In the decision, the Board sided with Apple
Inc. and found that:
The Board considers the term “iWATCH” is a coined word in its
entirety which does not give rise to any specific meaning at all. Therefore, it
is unlikely that relevant consumers conceive disputed mark just as a
qualitative indication of goods in question.
The Board admits “SWATCH” has been acquired a high degree of
reputation and popularity among relevant consumers and traders as famous watch
of Swatch Group. In the meantime, the term appears less unique and creative
since it is a dictionary word meaning ‘a sample piece (as of fabric) or a
collection of samples’.
Difference on initial letter of both marks shall not be negligible on
the case. The Board has no good reason to believe both marks are deemed similar
from visual, phonetic and conceptual points of view.
If so, it is unlikely to happen that relevant consumers with an
ordinary care would associate or misconceive disputed mark with Swatch or any
entity systematically or economically connected with claimant even when used on
‘watch’.
Based on the foregoing, the Board concluded “iWATCH” shall be irrevocable in relation to “SWATCH” and dismissed Swatch’s invalidation petition wholly.
On February 14 2020, the Japan IP High Court ruled to uphold the Japan Patent Office (JPO) decision and rejected TM application no. 2016-009831 for a 3D position mark consisting of three virtual images of oil stove flame due to a lack of inherent and acquired distinctiveness. [Case no. Reiwa1(Gyo-ke)10125]
TOYOTOMI Oil Stove “Rainbow”
TOYOTOMI CO., LTD., a Japanese company, the world’s first manufacturer of kerosene-fired portable cooking stove in 1952, has allegedly produced their convection type lantern-like design oil stoves in the name of “Rainbow” since 1980.
By means of a heat-resistant glass coated on the inner surface of vertical cylindrical heat chamber of the Rainbow stoves, virtual images of orange flame appear floatingly above actual flame when stoves are in use (see below).
3D Position mark
TOYOTOMI sought for registration for its
virtual images of flame in connection with convection type oil stoves in class
11 as a 3D Position mark (see below) on January 29, 2016.
In a description of the mark, applicant specified:
“applied mark is a position mark consisting of 3D virtual image of three flame rings appeared floatingly above the flame burning on stove at the inside of vertical cylindrical heat chamber. Devices colored in blue and red would not constitute an element of applied mark.“
In Japan, by enactment of the New Trademark Law in 2014, new type of mark, namely, color, sound, position, motion, hologram, was allowed for trademark registration since April 2015.
According to the JPO database, more than
480 position marks were applied for registration under the New Trademark Law
and 78 position marks are successfully registered as of now (Feb 29, 2020).
JPO decision
On March 2, 2018, the JPO examiner refused applied
mark under Article 3(1)(iii) of the Trademark Law based on the fact that mechanism
of 3D virtual shape of three flame rings was exclusively protected under Patent
No. 1508319 which was expired on July 25, 2000. According to technical specifications
of the patent, it is admitted that the 3D shape was purely achieved as a result
of utilitarian functionality and aesthetic functionality. If so, the JPO finds
it inappropriate to register the shape as a trademark because of unfair and detrimental
effect to the public caused by prospective perpetual exclusivity to the shape
itself that should have been a public domain under the Patent Law.
Besides, the JPO considered applied mark has
not acquired distinctiveness (secondary meaning) as a source indicator of
applicant’s products regardless of substantial use for more than three decades.
Subsequently, JPO dismissed an appeal on
the same ground. [Appeal case no. 2018-007479, on August 30, 2019]
To contend, applicant filed a lawsuit to
the IP High Court on September 26, 2019 and demanded cancellation of the
decision.
IP High Court ruling
This lawsuit was the very first case for the IP High Court to take up new type of trademark at the open court.
The court held a shape of goods shall not
be protectable as a source indicator if it just aims to achieve function of the
goods from utilitarian and aesthetic viewpoints. If such shape per se is apparently
destined to achieve functions of goods, it shall be refused for registration
under Article 3(1)(iii) of the Trademark Law.
In this regard, the court found, applied mark simply consists of a shape destined to achieve utilitarian and aesthetic functions of goods in question, since it is considered virtual images of floating flame ring aim to increase heating effect of convection type oil stoves.
A mere fact that none of competitors have used
identical or similar shape with applied mark on oil stoves would be irrelevant
to assess distinctiveness of mark under Article 3(1)(iii).
Even if three flame rings do not physically
constitute a shape of oil stoves, the court would see the JPO did not error in
adapting Article 3(1)(iii) on the case.
As for acquired distinctiveness, the court had
no reason to believe applied mark acquired secondary meaning through actual use
based on the produced evidence. TOYOTOMI allegedly held top-rank market share (22.5%)
of convection type oil stoves in Japan and annually delivered 29,000 stoves on
average for the last seven years. However, the court pointed out the TOYOTOMI
Rainbow stoves share just 2% when radiation type oil stoves are counted.
Besides, provided that applied mark is not visible to consumers who visit shops
to purchase oil stoves from appearance of the goods when turned off, it is questionable
whether average consumers would conceive the 3D shape as a source indicator, rather
than a functional shape of oil stoves.
Based on the foregoing, the IP High Court
upheld JPO decision.
