タグ: inherent distinctiveness

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

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The Japan Patent Office (JPO) allowed trademark registration of “Ghana” in connection with chocolates of class 30 by finding acquired distinctiveness as a source indicator of Lotte Co., Ltd., a Korea-based confectionary company.
[Appeal case no. 2019-8784, Gazette issued date: May 29, 2020]

Lotte “Ghana” Chocolates

Ghana chocolate is Lotte’s signature product and one of the most beloved chocolate in Japan for many years.

Lotte Co., Ltd. launched chocolates bearing the “Ghana” mark in 1964. Since then, the mark has been prominently indicated on the packages.

[“Ghana” chocolate package back in 1970’s – TM Reg no. 892507]

In 1994 of the 30th anniversary, Lotte slightly changed the design of its package and the mark and added different tastes of “Ghana” chocolates, e.g. milk chocolates, white chocolates. On new packages, the “Ghana” mark is much conspicuously and largely indicated than before.

[Current package – TM Reg no. 5405402, registered on April 8, 2011]

On December 8, 2017, Lotte sought trademark registration for the current “Ghana” logo (see below) over chocolates in class 30. [TM application no. 2017-161593]

Article 3(1)(iii) & 4(1)(xvi)

The JPO rejected the “Ghana” mark in contravention of Article 3(1)(iii) and 4(1)(xvi) of the Japan Trademark Law by stating that “Ghana” is a geographical indication corresponding to Republic of Ghana, a country of western Africa, situated on the coast of the Gulf of Guinea, one of the major producers of high-quality cocoa beans. Therefore, relevant consumers and traders at the sight of chocolates bearing the “Ghana” mark would merely conceive it of the origin of cocoa beans. Besides, whenever the mark is used on chocolates not made from Ghana cocoa beans, it inevitably misleads the quality of goods.

Acquired distinctiveness

Lotte argued the “Ghana” mark shall be protectable based on Article 3(2), even if nominally unregistrable under Article 3(1)(iii) because it has acquired distinctiveness as a result of substantial and continuous use on chocolates in Japan.

Article 3(2) of the Trademark Law

Notwithstanding the preceding paragraph, a trademark that falls under any of items (iii) to (v) of the preceding paragraph may be registered if, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person.

Appeal Board decision

The Appeal Board affirmed examiner’s rejection pertinent to lack of distinctiveness in connection with goods in question, however, the Board held that the “Ghana” mark would function as a source indicator of Lotte chocolates consequently and thus registrable based on the acquired distinctiveness under Article 3(2).

Allegedly Lotte “Ghana” chocolates hold top-ranked market share in Japan since 2017. In 2008, Lotte sold more than 100 million bars of “Ghana” chocolates. The annual sales exceeded 1.2 billion JP-yen in 2017.

Lotte has long been aggressive not only to advertise “Ghana” chocolates in newspapers, TV commercials, trains, and stations, but also to launch lots of chocolate events and campaigns on Valentine’s Day or Mother’s Day nationwide, and collaborations with retailers, hotels restaurants featuring ‘Ghana’ chocolates.

Due to their marketing efforts, Lotte “Ghana” brand chocolates could win several awards, e.g. Monde Selection ‘Gold Award’ (2008, 2009, 2010), D2C ‘Marketing Award’ (2002), The Japan Food Journal ‘Long Seller Award’ (2008), DENTSU ‘Excellent Award’ (2009, 2010, 2011), JR East ‘Excellent Advertisement Award’’.

Besides, “Ghana” chocolates ranked top in the brand survey published by Nikkei Research in 2016.

Lotte could eventually achieve registration of the “Ghana” mark on chocolates, but it spent more than five decades to that end.

Interestingly. Lotte has registered the “GANA” mark on goods of class 30 including chocolates since 1990. It must aim to prevent a third party from registering any mark similar to “Ghana”.

JPO protects 3D shape of cherry design bottle for soy sauce dispenser

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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.

First ruling by IP High Court on New Type of Trademark in Japan

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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.

JPO registers PUERTA DEL SOL as trademark

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In a recent appeal decision, the Japan Patent Office (JPO) overturned examiner’s refusal and decided to register trademark “PUERTA DEL SOL” in connection with jewels, accessories, clothing and other goods of class 14, 18, 25 and 34 by finding the term shall not be recognized as a geographical indication, one of the most famous sites in Madrid, Spain.[Appeal case no. 2019-7624, Gazette issued date: January 31, 2020]

PUERTA DEL SOL

PUERTA DEL SOL Co., Ltd., a Japanese jewels and accessories company, applied for registration of word mark “PUERTA DEL SOL” in relation to jewels, accessories, bags, clothing, shoes and other various goods of class 14, 18, 25 and 34 on January 23, 2018.

On March 19, 2019, JPO examiner refused applied mark due to lack of distinctiveness based on Article 3(1)(iii) of the Trademark Law. Examiner found that PUERTA DEL SOL, a public square in Madrid (the capital and largest city of Spain), one of the best known and busiest places in the city, the heart of Madrid’s historic center used to be on the eastern border of the city, has been known for a famous tourist spot in Madrid. Since relevant traders and consumers in Japan are familiar with circumstances that variety of souvenirs and gifts are on sale at tourist spot, it is presumed that consumers will merely conceive the applied mark just as a geographical indication in connection with the designated goods, not a source indicator.

Article 3(1)(iii)

Article 3(1) of the Trademark Law is a provision to prohibit descriptive marks from registering.

Section (iii) of the article aims to remove any mark merely or directly suggesting quality of goods and services.

“Article 3(1)　Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:

(iii)　consists solely of a mark indicating, in a common manner, in the case of goods, 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, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision;”

To dispute the refusal, applicant filed an appeal on June 10, 2019.

Applicant argued “PUERTA DEL SOL” shall be sufficiently distinctive in connection with the goods in question by citing facts that the term is legitimately registered even in the territory of Spain and less familiarity to Spanish language among relevant consumers with an ordinary care, Google search by a keyword “PUERA DEL SOL” reveals most of websites refer to applicant’s goods and business.
If so, it is groundless to find that relevant consumers would conceive applied mark as a geographical indication name when used on goods in question.

Appeal Board’s decision

The Appeal Board overturned the examiner’s decision by stating that relevant consumers and traders at the sight of applied mark are unlikely to see the mark to indicate the place of origin or sale when used on goods in question. Because the Board has no reason to believe the term “PUERTA DEL SOL” is known for a famous tourist square in Madrid even though Spanish dictionary and encyclopedia mention so by taking into account less familiarity to Spanish language among relevant consumers in Japan. Furthermore, there is no clue to find that the square is commonly indicated to represent a place of origin and sale in connection with the goods in question.

Criteria for Trademark Examination Guideline

Trademark Examination Guideline (TEG) pertinent to Article 3(1)(iii) provides that where a trademark is merely composed of a geographical name in foreign country or sightseeing area, the mark is deemed as “the place of origin” of goods or “the place of their sale”, provided that consumers or traders generally recognize that the designated goods will be produced or sold at the place indicated by the geographical name.

Trademark Examination Manual, 413.103.01 sets forth criteria to examine trademarks related to foreign geographical name.

In the cases of (a) the name of a capital, (b) the name of a state, (c) the name of a prefecture, (d) the name of a state capital, (e) the name of a province, (f) the name of the capital of a province, (g) the name of a county, (h) the name of the capital of a prefecture, (i) a former country name, (j) an old regional name, (k) the name of a district, (l) the name of a city, or special district, (m) the name of a busy downtown street, and (n) the name of a sightseeing area, even though these names may not be directly described in a dictionary or other documents/material as the place of origin, the place of sales (location of transaction) of the goods, or the location of provision of services (location of transaction), if a factor exists that establishes a connection between the goods and the name as the place of sales (location of transaction), or the location of the provision of services (location of transaction), in principle, the trademark will be refused on the grounds that it indicates the location where the goods are sold (location of transaction) or the location of provision of services (location of transaction)

AI SCAN ROBO

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In a recent administrative decision, the Appeal Board of Japan Patent Office (JPO) allowed registration for a word mark of “AI SCAN ROBO”, finding that the mark could function as a source indicator.
[Appeal case no. 2018-5433, Gazette issue date: November 30, 2018]

 

AI SCAN ROBO

Disputed mark, consisting of “AI SCAN ROBO” in a standard character, was applied for registration on April 13, 2017 in connection with computer programs of class 9 and data processing in computer files for others of class 42.

The JPO examiner totally refused the mark due to lack of distinctiveness by stating that:

“AI” is known for an abbreviation of Artificial Intelligence. “SCAN” is a verb to use a machine to make a copy of a document or picture and put it into a computer. “ROBO” is equivalent to “robot”. Besides, the term of “SCAN ROBO” becomes generic in connection with Robotic Process Automation (RPA) robot to capture data and manipulate applications automatically. If so, disputed mark shall fall under Article 3(1)(vi) of the Japan Trademark Law since relevant consumers are likely to conceive disputed mark as a mere description of RPA robot to capture data automatically by making use of Artificial Intelligence.

 

Article 3(1)(vi) is a comprehensive provision to prohibit any mark lacking inherent distinctiveness from being registered.

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.

 

Applicant filed an appeal against the refusal and argued inherent distinctiveness of applied mark “AI SCAN ROBO” in its entirety.

 

Appeal Board decision

The Board set aside the refusal, finding that disputed mark shall not fall under Article 3(1)(vi) on following grounds.

  1. “AI” is known for an abbreviation of Artificial Intelligence.
  2. In the meantime, the Board opines the term “SCAN ROBO” per se does not represent a specific meaning. Rather it shall be considered as a coined word.
  3. If so, “AI SCAN ROBO” does not give rise to any descriptive meaning as a whole.
  4. Besides, there found no circumstances in commerce to support the term “AI SCAN ROBO” has been commonly used in connection with designated goods and service.
  5. Based on the foregoing, it shall be concluded that disputed mark is distinctive and relevant consumers and traders recognize it as a source indicator.

Never trademark “BON GOÛT” in food-service business

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The Appeal Board of the Japan Patent Office (JPO) decided to register a term of “bon goût” in relation to various foods of class 30 and restaurant service of class 43 by finding that the term is deemed a coined word to relevant public in Japan.
[Appeal case no. 2017-7985]

“BON GOÛT”

Disputed mark (see below), written in a common font design, was filed in December 14 by designating various foods of class 30, e.g. buns and breads, confectioneries, hamburgers, pizza, hot dogs, spices, noodles, pasta, coffee, tea, and restaurant service, rental of cooking apparatus and microwave ovens and others of class 43 in the ultimate.

Lack of distinctiveness

JPO examiner entirely refused the mark due to lack of distinctiveness based on Article 3(1)(iii) of the Trademark Law. In refusal decision, examiner asserted the term of “bon goût” is a French term to mean “good taste” in English.

If so, relevant consumers and traders are likely to conceive the term in association with quality of goods and services.

Besides, given the mark is written in a common font design, it shall be objectionable under Article 3(1)(iii) since the mark is solely composed 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.

 

Appeal Board decision

In the meantime, the Appeal Board overruled examiner’s rejection and granted registration of “bon goût”.

The Board admitted the terms of “bon” and “goût” are French words meaning good and taste respectively by referring to French dictionary, but, in contrast, considered a combined word of “bon goût” is unfamiliar to Japanese public with an ordinary care.
If so, disputed mark shall be deemed a coined word in its entirety and relevant consumers are unlikely to conceive any specific meaning from the mark.

Besides, the Board held, as a result of ex officio examination, there found no circumstance to convince “bon goût” is ordinarily used as a mere descriptive indication in food-service business.

Consequently, it is groundless to reject the trademark “bon goût” based on Article 3(1)(iii) since it does not give rise to any descriptive meaning in relation to the goods and services in question.

This case gives us a lesson.
Descriptive term in foreign language has a potential risk to be registered in Japan if we are unfamiliar to the term.