タグ: Article 3(2)

JPO Decision: the Volkswagen Beetle 3D shape Lacks Distinctiveness

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The JPO Appeal Board affirmed the examiner’s rejection and decided to refuse IR no. 1379178 for the 3D shape of the Volkswagen Beetle due to a lack of inherent and acquired distinctiveness in relation to goods of classes 9, 28, and 30.

[Appeal case no. 2020-650030, Gazette issued date: January 27, 2023]

VW Beetle

German car giant Volkswagen AG filed a 3D mark representing the iconic VW Beetle car (see below) in relation to various goods including navigation apparatus for vehicles [onboard computers], toy automobiles, scale model automobiles of classes 9, 28, and 30 with the JPO via the Madrid Protocol on December 7, 2017.

The JPO examiner rejected the mark in contravention of Article 3(1)(iii) and 4(1)(xvi) of the Japan Trademark Law on March 19, 2020, by stating that the mark merely represents a common shape of goods when used on toy automobiles, scale model automobiles of class 28 and chocolate and desserts, ice creams, frozen yogurts and sorbets of class 30, and consumers will misunderstand the quality of goods when used on other designated goods.

Appeal by Volkswagen

Volkswagen filed an appeal against the rejection on July 2, 2020, and argued the inherent and acquired distinctiveness of the 3D mark as a result of substantial use on VW’s automobiles (cl. 12) for more than six decades and around 21.5 million units cumulatively.

JPO Decision

The Appeal Board at its discretion found plenty of goods in the shape of cars promoted for sale in relation to toy automobiles, scale model automobiles (cl. 28), and chocolate and desserts, frozen yogurts, and sorbets (cl. 30).

Bearing this fact in mind, the Board has a reason to believe the applied mark is adopted for a purpose of enhancing function or the aesthetic appeal of the goods in question. If so, the shape still remains within the scope of the descriptive shape of goods and shall be unregistrable due to a lack of inherent distinctiveness in relation to these goods.

Furthermore, the Board pointed out that Volkswagen stopped manufacturing cars in the shape of the applied mark in 2003. There is reasonable doubt that the 3D mark has been famous as a source indicator of VW cars after a lapse of twenty years. Besides, the applicant has not produced any evidence to demonstrate the actual use of the 3D shape on goods in classes 9, 28, and 30 and its sales.

Based on the foregoing, the Board found the 3D mark lacks inherent and acquired distinctiveness in relation to the goods in question and dismissed the appeal entirely.

IP High Court Rules Lego 3D Figure Mark Unregistrable

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The Japan IP High Court dismissed an appeal brought by Lego Juris A/S and affirmed the Japan Patent Office (JPO) decision that found the 3D shape of Lego figures unregistrable due to a lack of inherent distinctiveness and secondary meaning in relation to toys.

[Court case no. Reiwa4(Gyo-ke)10050, decision date: December 26, 2022]

LEGO 3D Figure Mark

Toy giant, Lego Juris A/S applied 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 (TM App no. 2017-138422).

JPO rejection

The JPO Appeal Board sustained 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 shapes figures have been promoted for sale by competitors in the relevant business field.
  2. There is less necessity to adopt a 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 the 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, and (iii) to stand still in the display, and play.
  4. If so, relevant consumers would assume the whole shape and its unique decoration of the Lego figure attributable to enhancing function or the aesthetic appeal of the toy.

Based on the foregoing, on January 6, 2022, the Board decided to dismiss the appeal in contravention of Article 3(1)(iii) of the Japan Trademark Law. See a previous post from here.

Lego Juris A/S immediately brought the case to the IP High Court and argued inherent distinctiveness and secondary meaning as a result of the substantial use of the 3D shape in relation to toys.

IP High Court ruling

By judgment of December 26, 2022, the IP High Court found relevant consumers are likely to consider the 3D shape as a whole adopted for a purpose of enhancing function or the aesthetic appeal of ‘human figure toys’ by taking into account a lot of human shape figures with similar features by competitors and trade practice.

The judge stated JPO did not error in applying Article 3(1)(iii) of the Japan Trademark Law and the 3D mark shall be unregistrable due to a lack of inherent distinctiveness under the article.

As for Lego’s allegations of the secondary meaning, the judge, based on the produced evidence, pointed out that relevant consumers would just consider the 3D mark as an unfinished shape of Lego figures because there is a number of figures wearing caps and hair wigs with different facial expressions.

In order to bolster secondary meaning, Lego produced an interview report, showing 37.32% of the interviewees (a total of 1,190 people aged over 16) selected “Lego” from a list. However, the judge thought it negatively by paying an attention to the fact that more interviewees (amounting to 37.45%) selected other brands from the list.

Accordingly, the court decided the 3D mark is even unregistrable under Article 3(2) because it has yet to acquire secondary meaning as a source indicator of Lego figures.

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.

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.

Acquired distinctiveness for 3D shape of OMRON digital thermometer

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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.

Appeal Board’s decision – Acquired Distinctiveness

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]

JPO rejects 3D Shape Mark of Giant Cotton Candy

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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:

  1. Allegedly applicant has used applied mark on cotton candy since February 2015, however, he failed to produce objective evidence of its first use.
  2. 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.
  3. 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.
  4. 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.
  5. 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.