タグ: inherent distinctiveness

Hummel Victory in Appeal to Overcome Rejection against Chevron Position Mark

Posted on

The Japan Patent Office (JPO) Appeal Board disaffirmed the examiner’s rejection and granted registration of TM App nos. 2018-133121 and 2018-133123 for a position mark consisting of chevron devices in relation to jackets and pants (trousers) of class 25 by finding inherent distinctiveness of the position marks.
[Appeal case nos. 2022-13211, 2022-13212 decided on December 20, 2023]

Hummel Chevron Position Mark

Hummel Holding AS filed two position marks with the JPO (TM App nos. 2018-133121, 2018-133123) on October 25, 2018. TM App no. 2018-133121 consists of 15 chevron devices positioned in series from shoulder to sleeve (see below left), and designates long-sleeved jackets in class 25. TM App no. 2018-133123 consists of 21 chevron devices positioned in series from waist to hem (see below right), and designates pants and trousers in class 25.

JPO Examination

On May 25, 2022, the JPO examiner rejected both marks based on Article 3(1)(vi) of the Japan Trademark Law by stating that:

In fashion industry, there are plenty of jackets and pants with decorations aiming to enhance aesthetic effect of the goods and attract consumers.  Under the circumstances, relevant consumers at the sight of pants or jackets bearing the position mark would not see it as a source indicator, but as a pattern for decorative or functional indication.

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.

Hummel Holding AS filed an appeal against the rejection on August 23, 2022 and argued inherent distinctiveness of the position marks.

JPO Appeal Board decision

The Appeal Board found that respective mark would be far from a common or descriptive device as a whole.

In relevant industries, competitors often provide jackets and pants bearing their brand on the same position with the Hummel Chevron mark. If so, consumers are also accustomed to distinguishing a source of the goods by means of devices depicted on the position.

Bearing in mind that the applicant has been extensively and continuously using the position marks on their jackets and pants, presumably the marks have become famous as a source indicator of the applicant among relevant consumers.

Besides, the Board could not find any evidence of a common use of the chevron device on the same position as a decorative or functional indication.

Based on the foregoing, the Board held that relevant consumers would recognize the position marks as a source indicator. If so, the examiner made an error in finding distinctiveness of respective mark. Therefore, the Board disaffirmed the examiner’s rejection and decided in favor of Hummel Holding AS consequently.

JPO rejection to Kubota Tractors’ Color Marks

Posted on

On October 31, 2023, the Japan Patent Office (JPO) rejected color marks for use on farm tractors by KUBOTA Corporation due to a lack of inherent and acquired distinctiveness in relation to farm tractors in class 12.

Kubota farm tractors

KUBOTA Corporation, established in 1890, a Japanese company manufacturing a wide range of agricultural machines, launched its farm tractors in 1960. According to the allegations, KUBOTA has used an orange color and black-and-orange colors on its farm tractors since 1980. In recent years, the tractors have occupied top market share of around 50% in Japan.

https://www.kubota.com/products/tractor/index.html

On December 26, 2018, KUBOTA applied for registration of color marks (see below) consisting of an orange color and color combinations (orange and black / orange, black and white) with the JPO in relation to farm tractors of class 12.

JPO rejection

The JPO examiner rejected the applications based on Article 3(1)(iii) of the Japan Trademark Law and found every color mark does not satisfy requirements of Article 3(2) by stating that:

  1. Farm tractors with similar color have been distributed by several competitors. Orange color has been commonly used on other agricultural machinery. Under the circumstances, there is no distinctive character to apply and use the applied color(s) on body, front grill, wheels of farm tractors. If so, the color marks are deemed descriptive in relation to the designated goods and shall be rejected based on Article 3(1)(iii).
  2. The market research that targeted 589 consumers resulted in approx. 30% of the interviewees answering “KUBOTA”. The result is insufficient to admit the color(s) per se has acquired distinctiveness as a source indicator because more than 30% associated the mark with other competitors in spite that Kubota’s tractors have occupied top market share for long years.
  3. In view of the fact that orange corresponds to one of safety colors determined by the Japan Industrial Standards (JIS), there is a high demand to freely use the color in our society.
  4. Based on the foregoing, the examiner has no reason to believe the applied color marks have acquired a secondary meaning and played a role in identifying the source of Kubota’s farm tractors by itself.

Japan IP High Court Decision to A Position Mark of Dr. Martens’ Yellow Welt Stitch

Posted on

On August 10, 2023, the Japan IP Hight Court ruled to dismiss an appeal by Airwair International Limited to the JPO’s rejection against a position mark for Dr. Martens’ Yellow Welt Stitch.

[Court case no. Reiwa 5(Gyo-ke)10003]

Dr. Martens’ Yellow Welt Stitch

Airwair International Limited, a UK company, applied a position mark consisting of a yellow stitching around the perimeter of footwear on the outer sole edge (see below) for use on leather shoes and boots in class 25 with the JPO on June 12, 2018 (TM App no. 2018-77608).

Allegedly, first use of the position mark on the Dr. Martens “1460” boots has dated back to 1960 in UK. Leather shoes and boots bearing the yellow welt stitch have been continuously distributed in Japan by the applicant or a local subsidiary (Dr. Martens Japan) via company store (61 shops at present) and major shoes retailers since 1985. Recent annual sales for Dr.  Martens’ shoes in Japan exceed 6 billion Japanese yens and over 460,000 pairs. Airwair has routinely monitored and taken legal actions against lookalikes of shoes bearing the yellow welt stitch and been successful in stopping distribution of following shoes.

According to the brand awareness survey that targeted a total of 1,019 men and women aged from 15 to 59, 30.7% of the interviewees who have purchased leather shoes and boots could answer Dr. Martens at the sight of black leather shoes with the yellow welt stitch and 37.6% selected Dr. Martens from multiple choice.

On August 23, 2022, The JPO Appeal Board decided the yellow stitching of Dr. Martens does not possess its own distinctive character by stating that relevant consumers would not see the stitch as a source indicator, but as a mere decoration. The Board also negated acquired distinctiveness of the position mark based on the fact that a majority of frequent users of the goods in question could not connect the stitch with Dr. Martens. Accordingly, the Board sustained the examiner’s rejection (Appeal case no. 2021-2446).

Airwair filed an appeal against the JPO Appeal Board decision and argued inherent and acquired distinctiveness of the Dr. Martens’ yellow welt stitch in relation to leather shoes and goods.

IP High Court decision

Inherent distinctiveness

The Court paid attention to the circumstance that plenty of leather shoes and boots have been manufactured by means of the Goodyear Welted Method for long years and the thread stitched to attach the upper to the sole has often identical or similar color to the upper and sole. If so, in relation to yellow-colored shoes, a yellow stitch would be anything but distinctive.

Bearing in mind that the applied mark does not specify a color of the upper and the sole, the judge had a view that it is allowed to assess inherent distinctiveness of the position mark in relation to the shoes with a yellow thread, upper and sole and any colors.

Based on the foregoing, the Court found the position mark lacks inherent distinctiveness in relation to leather shoes and boots and shall be unregistrable based on Article 3(1)(iii) of the Trademark Law.

Acquired distinctiveness

The Court questioned relevance of the brand awareness survey that excluded consumers who had not purchased either leather shoes or boots in the past year. However, by taking account of an expert opinion that points out 15% shall be sufficient to admit distinctiveness of trade dress as a source indicator especially in fashion industry and the survey revealed there were over four times as many interviewees who selected Dr. Martens than Timberland (7.9%) from multiple choice, the judge ruled Dr. Martens’ yellow welt stitch has acquired a certain degree of recognition as a sign that the black leather shoes originate from the Airwair company.

In the meantime, the Court held there is doubt if the position mark would play a role in indicating its source even when used on a yellow or similar colored outsole or welt. As a matter of fact, Airwair has not taken actions against shoes having non-black outsoles and welts.

Given the applied mark does not restrict a color of shoes, a fact that Dr. Martens’ yellow welt stitch has played a role of source indication in relation to black leather shoes and boots is insufficient to find acquired distinctiveness of the appled mark and admit registration under Article 3(2) of the Trademark Law.

Obviously, the Court opens a gate to register Dr. Martens’ yellow welt stitch provided that a position mark consists of yellow stich and black upper and welt.

CASIO Successful in Registering 3D Shape of “G-SHOCK” Watch

Posted on

The Japan Patent Office (JPO) disaffirmed the examiner’s rejection and granted protection to the 3D shape of the Casio “G-Shock” watch by finding acquired distinctiveness as a result of substantial use over the past four decades.

[Appeal case no. 20212-11052, Gazette issued date: June 30, 2023]

CASIO “G-SHOCK” Watch

On April 28, 2021, Casio Computer Co., Ltd. filed a trademark application for the 3D shape of the first-released G-Shock, the DW-5000 (see below) to be used on ‘watches’ in class 14 with the JPO (TM application no. 2021-52961).

Rejection by JPO Examiner

On April 11, 2022, the JPO examiner rejected the 3D mark based on Article 3(1)(iii) of the Japan Trademark Law.

In the rejection, taking into consideration various decorations or patterns on the belt and case of wristwatches by other watchmakers (see below), the examiner considered the 3D shape of the applied mark lacks distinctiveness as a source indicator of wristwatch because relevant consumers and traders would recognize it simply represents a common shape of wristwatch adopted to enhance aesthetic function and psychological effect on the goods in question.

The examiner negated the acquired distinctiveness of the 3D shape of “G-Shock”, the DW-5000 regardless of continuous use on Casio’s wristwatches for 40 years on the grounds that:

  1. On the goods, catalogs, and advertisements, wordmarks “CASIO” and “G-SHOCK” have been constantly used as well.
  2. The “G-Shock” wristwatch collection has a lot of models that have a different appearance from the applied 3D shape.
  3. The market research that targeted a total of 1,100 men and women aged over 16 resulted in 55.52% of the interviewees answering “Casio” or “G-Shock” to an open-ended question when shown the 3D shape of the DW-5000. The percentage is insufficient to admit the 3D shape per se has acquired distinctiveness as a source indicator.
A screen shot from casio.com

On July 15, 2022, Casio filed an appeal against the rejection and disputed the acquired distinctiveness.

JPO Appeal Board decision

The Appeal Board affirmed the examiner’s finding in applying Article 3(1)(iii) of the Trademark Law.

In the meantime, the Board paid attention to the fact 66.27% of the interviewees selected “Casio” or “G-Shock” to a closed-ended question, where it mentions G-Shock along with other close competitors.

Provided that more than 60% of consumers associate the 3D shape with Casio or G-Shock, and the shape has the reputation as a representative model of the G-Shock with its unique shock-resistance form, the Board has a reason to believe the 3D shape per se has acquired a substantial degree of recognition among relevant consumers and played a role in source indicator of Casio’s wristwatches. If so, the examiner errored in applying Article 3(2) of the Trademark Law.

Based on the foregoing, the Board decided to cancel the examiner’s rejection and admitted registration of the applied mark exceptionally based on Article 3(2).

Audemars Piguet Unsuccessful Challenge of TM Registration for Iconic Shape of “ROYAL OAK” Timepiece

Posted on

On June 8, 2023, the Japan Patent Office (JPO) dismissed an appeal filed by Audemars Piguet Holding SA, a Swiss luxury watchmaker, and affirmed the examiner’s rejection of TM App no. 2020-20319 for a device mark representing AP’s iconic “ROYAL OAK” watch collection by finding a lack of inherent and acquired distinctiveness. [Appeal case no. 2021-013234]

Audemars Piguet “ROYAL OAK” Watch Collection

On February 26, 2020, Audemars Piguet Holding SA (AP) filed a trademark application for the shape of the flagship watch collection “ROYAL OAK” (see below) to be used on ‘watches’ in class 14 with the Japan Patent Office (JPO) [TM application no. 2020-20319].

The mark consists of a dial with tapisserie pattern and hour markers, minute track, date window, an octagonal bezel with 8 hexagonal screws, case, crown, and a lug of the famed “ROYAL OAK” watch collections.

On July 1, 2021, the JPO examiner rejected the applied mark due to a lack of inherent distinctiveness based on Articles 3(1)(iii) of the Japan Trademark Law by stating that relevant consumers would simply recognize it as a generic shape of a wristwatch, not a specific source indication. Besides, from the produced evidence, the examiner did not find the shape per se has acquired nationwide recognition as a source indicator of AP’s watches.

Appeal against the examiner’s rejection by AP

AP filed an appeal against the rejection on October 1, 2021, and alleged inherent distinctiveness as well as acquired distinctiveness of the shape in relation to watches.

AP argued the shape shall be considered inherently distinctive by virtue of a combination of three unique features, namely, (i) an octagonal bezel, (ii) 8 hexagonal screws, and (iii) tapisserie pattern on the surface of a dial. It is inappropriate for the examiner to negate the distinctiveness of the applied mark based on similar watches by third parties that imitate “ROYAL OAK” collections.

Allegedly, “ROYAL OAK” luxury watches have been promoted for sale in Japan since 1972. Annual sales exceed JPY 8 billion on average in the past six years. Each year, AP spent more than JPY400 million on advertisement and promotion in Japan. As a result of the substantial use of the shape on famous AP watches over four decades, even if the shape inherently lacks distinctiveness, it has acquired a significant role as a source indication.

JPO Appeal Board decision

In the decision, the Board held “There are plenty of wristwatches placed in the marketplace by many watchmakers that have a similar shape to the dial, bezel, case, crown, and lug of the applied mark (see below examples). Therefore, the shape, even if it does not contain hands and strap, is unlikely to indicate the origin of goods and distinguish them from competitors”. If so, the examiner’s findings are adequate and the Board did not find any error in applying Article 3(1)(iii) of the Trademark Law on the case.

Besides, the Board questioned if the shape per se has played a role in the source indication of AP’s watches regardless of admitting the presence of “ROYAL OAK” watches in the market for long years on the following grounds.

  1. Number of official stores, 11 is by no means numerous.
  2. The evidence did not suggest any transaction of wristwatches using the applied mark (namely, a watch without strip and hands)
  3. AP did not submit objective evidence to support the sales of “ROYAL OAK” watches
  4. Since AP did not make clear the market share of “ROYAL OAK” watches, it is impossible to compare them with competitors’ watches.
  5. Publications and internet articles pertinent to the “ROYAL OAK” watches always features literal elements “ROYAL OAK”, “AP” or “AUDEMARS PIGUET”.
  6. AP did not produce a market survey to demonstrate how many consumers can identify a source of the wristwatch from the applied mark.

Based on the foregoing, the Board found the applied mark has not acquired a certain degree of recognition as a source indicator of a specific entity among relevant consumers in relation to watches under Article 3(2), and decided to refuse the shape of AP’s “ROYAL OAK” watches.

JPO Appeal Board Rejects Hermes Packaging Colors

Posted on

On April 25, 2023, the JPO Appeal Board dismissed an appeal filed by HERMES INTERNATIONAL, a French luxury fashion house, and upheld the examiner’s rejection of TM App no. 2018-133223 for a color mark of Hermes box due to lack of inherent and acquired distinctiveness.

[Appeal case no. 2021-13743]

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].

On July 9, 2021, the JPO examiner rejected the applied mark based on Articles 3(1)(iii) and 3(1)(vi) of the Japan Trademark Law by stating that colors per se would not have any distinctive character. It has been inherently selected to produce aesthetic function or psychological effect on all goods and services. Because of this reason, relevant consumers at the sight of goods or services bearing the applied combination of colors, orange and brown are unlikely to recognize it as a source indicator.

Appeal against the examiner’s rejection by Hermes

Hermes filed an appeal against the rejection on October 8, 2022, and argued inherent distinctiveness as well as acquired distinctiveness of the color mark.

In addition to the evidence regarding the substantial use of Hermes box for the past six decades, in order to bolster the acquired distinctiveness of the packaging color per se, Hermes conducted market research that targeted men and women in their 30s to 50s with incomes JPY10,000,000 and above residing in 9 prefectures. 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 the ten options.

JPO Appeal Board decision

The Appeal Board did not find any error in the examiner’s findings. The Board held “Colors are selected to enhance the impression and aesthetics of goods and services. Some colors are obtained naturally or inevitably to ensure the function of goods or services. Therefore, colors are not recognized to indicate the origin of goods or services and distinguish them from competitors.

The Board finds no particular reason to treat the case differently in the circumstances that competitors have used similar combinations of colors including orange and brown in the relevant industries. If so, the examiner’s findings are adequate and would not error in applying Article 3(1)(iii) and (vi) of the Trademark Law.

With respect to the acquired distinctiveness of Hermes box, the Board questioned the relevance of the market research to the issue by stating that relevant consumers of the goods and service in question shall not be restricted to “men and women in their 30s to 50s with incomes JPY10,000,000 and above”. Presumably, 43.1% would be much lower if general consumers nationwide are included in the research. If so, it would be anything but unreasonable to find the applied mark has yet to acquire distinctiveness among relevant consumers.

Based on the foregoing, the Board accordingly upheld the examiner’s rejection and decided to refuse the color mark of the Hermes box under Article 3(1)(iii) and (vi) as well as 3(2) of the Trademark Law.

Hermes is entitled to file an appeal to the IP High Court by August 23, 2023.

Tragic End of Trademark Challenge for Louboutin

Posted on

In a series of Louboutin’s legal challenge to claim exclusive right over red soles, the Japan IP High Court, on the heels of the dismissal of Louboutin’s infringement claim on December 26, 2022, affirmed the JPO rejection to TM Application no. 2015-29921 for a red colored mark in sole and ruled Louboutin’s red soles shall be unregistrable under the Trademark Law on January 30, 2023.

[Court case no. Reiwa 4(Gyo-ke)10089]

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).

JPO Rejection

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

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.

Louboutin brought the case to the IP High Court and appealed to cancel the JPO decision.

IP High Court decision

In the decision, the IP High Court expressed a view that a trademark consisting of a single color shall not be registrable unless it has acquired an extremely high degree of recognition to indicate a specific source as a result of substantial use to the extent that exclusive use of the color would not cause detrimental effect to the public in general.

In this respect, the court affirmed the JPO findings that a lot of heels with red-colored soles have been distributed by other shoemakers in Japan for years and negated the inherent distinctiveness of the red-colored mark.

In the assessment of acquired distinctiveness, the court found the survey that demonstrated 51.6% of the interviewees (3,149 females, aged from 20 to 50) having a domicile in three big cities (Tokyo, Osaka, or Nagoya) was insufficient to find acquired distinctiveness of the red soles among relevant consumers, assuming that the percentage would become lower if the survey targets more females residing in other cities nationwide.

Even if Louboutin’s red soles have become famous among consumers who have a high interest in luxury brands, the Court has no reason to believe that the red colored mark has acquired an extremely high degree of recognition as a source indicator to the extent that general public would tolerate its exclusive use on soles.

Based on the foregoing, the IP High Court affirmed the JPO decision and dismissed entire allegations by Louboutin.

Consequently, Louboutin’s legal challenge was decisively blown off by two IP High Court rulings unless the Supreme Court holds out its hand on Louboutin.

JPO Decision: the Volkswagen Beetle 3D shape Lacks Distinctiveness

Posted on

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

Posted on

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.

TM Race: Which is Registrable, “Virtual Marathon” or “Virtual Tokyo Marathon”?

Posted on

In a recent administrative decision, the Japan Patent Office (JPO) found the word mark “Virtual Marathon” lacks distinctiveness in relation to marathon races of class 41 although the JPO admitted registration of the word mark “Virtual Tokyo Marathon” in the same class.

[Appeal case no. 2022-001910, Decision date: December 12, 2022]

Virtual Marathon

During the COVID-19 pandemic when large gathering in person is not possible, many major running decided to go virtual around the globe.

On March 30, 2020, R-bies Co., Ltd., a Japanese company managing sports events and sports media, filed a word mark “Virtual Marathon” written in Japanese Katakana characters (see below) for use on various goods and services including marathon races in classes 9, 41, and 42.

Virtual Tokyo Marathon

Three months later, Tokyo Marathon Foundation filed a trademark application for the word mark “Virtual Tokyo Marathon” in standard character on various goods and services in classes 9, 35, 36, 38, 41, 42, and 45.

The JPO did not raise any objection to the Virtual Tokyo Marathon mark and granted protection on June 21, 2021.

Examiner’s Refusal

In the meantime, on April 7, 2021, the JPO examiner raised her objection to the Virtual Marathon mark due to a lack of inherent distinctiveness in relation to sports events and marathon races of class 41 by stating that the term “virtual marathon” is commonly used to indicate an organized event where participants run a full marathon in an individual place of their choice during a specific date range tracked on an app on their smartphones. If so, the mark “Virtual Marathon” shall not meet the requirements of Article 3(1)(iii) of the Japan Trademark Law. The applicant filed a written response and argued the distinctiveness of the mark, however, the examiner did not withdraw her objection and decided to reject the entire application on November 8, 2021.

R-bies Co., Ltd. filed an appeal to the refusal on February 8, 2022, and argued the inherent distinctiveness of the Virtual Marathon mark by citing a junior trademark application for the “Virtual Tokyo Marathon” mark that was considered distinctive in relation to the same goods and services (TM Reg no. 6420795).

JPO decision

The JPO Appeal Board affirmed the examiner’s findings by citing a lot of web articles pertinent to virtual marathon races organized in Japan.

Under the circumstance, the Board has a reason to believe that relevant consumers at the sight of the Virtual Marathon mark are likely to conceive of online footrace in which each participant goes out and runs the full marathon in their own time, not as a source indicator of sports event managed by R-bies Co., Ltd. or other specific entity.

Based on the foregoing, the Appeal Board upheld the examiner’s refusal and decided to reject the word mark “Virtual Marathon” in contravention of Article 3(1)(iii).

As a matter of interpretation of the Trademark Law, provided that “Virtual Marathon” is to be rejected under Article 3(1)(iii), “Virtual Tokyo Marathon” shall be rejected on the same ground as well unless Tokyo Marathon Foundation demonstrates acquired distinctiveness of the mark as a result of substantial use. I believe it is impossible because the Tokyo Marathon was never virtually started before registration.