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

In a lawsuit disputing adequacy of decision by the JPO Appeal Board (Appeal case no. 2015-907) to refuse the applied 3D mark (TM2014-5943, class 28), consisting of a three-dimensional shape of electronic baccarat shoe with the program enabling to reduce the chance of foreign cards and eliminate dealer mistakes, due to lack of  distinctiveness and secondary meaning, the IP High Court sustained the decision being appealed.
[Case no. Heisei28(Gyo-ke)10266,  Decision date: September 27, 2017]

Inherent distinctiveness of the 3D shape

Plaintiff, a Japanese manufacturer and distributor of the ANGEL EYE electronic baccarat shoe, asserted that the 3D shape of ANGEL EYE, being the first products in the industry, is not an essential shape to make it free for public use since no competitors have dealt with same type of product other than plaintiff so far. Besides, a fact that the 3D shape has been registered in the legal gambling countries, e.g. US, EU, AU, RU, Malaysia and NZ, will rather bolster necessity to allow exclusive right on the shape.

However, the Court opposed to plaintiff. “It is inadequate to allow plaintiff to use the 3D shape exclusively. Applied 3D mark can be perceived objectively as a general shape of electronic baccarat shoe aimed to fulfill its original function and produce aesthetic image. If so, it may disorder a fair marketplace to allow exclusive use to plaintiff just because of a first-to-file. A mere fact of trademark registrations in countries where the ANGEL EYE has been distributed is insufficient to admit trademark registration in our nation since the goods is yet to be distributed in Japan.” Accordingly, the Court refused Applied 3D mark based on Article 3(1)(iii).

 

Secondary meaning of Applied 3D mark

Plaintiff argued Applied 3D mark has already served to function as a source indicator by means of substantial use of the mark sine 2005. Plaintiff exported 11,481 units (sale proceeds: 2.7 billion yen) over the lase decade and has achieved 90 % market share in Macau, the world’s largest casino gambling hub.

In this respect, the Court ruled in favor of the JPO. As plaintiff admits, the shoe has not been manufactured for domestic use. Any evidence suggesting a high degree of recognition to Applied 3D mark in foreign countries is neither relevant nor persuasive. Unless plaintiff demonstrates that domestic consumers have become aware of such recognition, it is groundless to find Applied 3D mark would satisfy requisite of secondary meaning based on Article 3(2) of the Japan Trademark Law.


The case raises a question: What is a role of the Trademark Law where applied mark, being registered in foreign nations,  confronts with an insuperable refusal attributable to legal restrictions on domestic use of the mark?
Unsuccessful domestic registration prevents domestic company from utilizing the Madrid Protocol and protecting his/her vital brands on the global market in an effective and economical manner.  

Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM

3D shape of Zippo lighters registrable when a lighter lid open, but unregistrable when closed

In an appeal to the refusal decision against trademark application no. 2014-8964 for a three dimensional shape of box-type lighter in connection with lighters of class 34 filed by ZIPPO Manufacturing Company (US), the Appeal Board of Japan Patent Office (JPO), after stating the application impermissibly contains two 3D marks, namely Shape A with a lighter lid closed and Shape B with a lighter lid open, ruled as follows.

Shape A
Shape A can be easily perceived as a shape of box-type lighter with the lid closed in connection with the goods in dispute. Besides, as a matter of fact, similar lighters are commercially produced and distributed in general. If so, relevant traders and consumers at the sight of Shape A  are likely to conceive the shape as a mere indication of the lighter.  Thus, Shape A is objectionable based on Article 3(1)(iii) of the Trademark Law since the shape solely consists of a shape commonly used on lighters.

Even if Shape A corresponds to the 3D shape of “ZIPPO Brushed Chrome 200” substantially produced and promoted by applicant, it is questioned whether Shape A serves to function as a source indicator since presumably traders and consumers distinguish applicant’s lighters by the “ZIPPO” letter marked at the bottom of the lighter where the lid remains closed. Accordingly, Shape A is unregistrable based on Article 3(2) as well.

Shape B
Three dimensional shapes cited for refusal during initial examination are all related to box-type lighters with a lid closed. As long as there shows no reference to lighters with a lid open in the refusal decision, it should be construed that the initial examination just questioned Shape A, not B.

Since applicant amended to delete Shape A from the application, the initial decision lacks legal ground to refusal the applied mark of Shape B based on Article 3(1)(iii) accordingly.

As a conclusion, the Board admits to register the applied 3D mark consisting of Shape B in connection with lighters.
[Appeal case no. 2016-2368]


It is worthy to note that in an attempt to register 3D shape of goods, a hidden shape is considered an independent mark from the shape perceivable from appearance of the goods.
Besides, the JPO allowed to delete one of 3D marks depicted in the application document without detrimental effect to the applicant despite that the Trademark Law prohibits amendment of mark amounting to change its gist.

MASAKI MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM

Can shape of musical instruments play a role of trademark?

In a dispute of registrability to a unique three-dimensional shape of electric violins, the Appeal Board admitted protection of the mark based on distinctiveness acquired by means of substantial publicity of the violins [Appeal case no. 2016-1859].

YAMAHA Corporation applied for 3D shape of electric violin promoted under the name of “SILENT Violin” by designating electric violins of class 15 on September 24, 2014 [TM application no. 2014-80685].

 


Initial examination

Examiner rejected the applied mark by stating that;

“Unsymmetrical appearance of the applied mark can still be perceived as a three-dimensional shape of electric or electronic violins in its entirety.According to information retrieved from the websites, unsymmetrical violins have been distributed with an attempt to aesthetic appearance or weight saving.Admittedly, the applied 3D shape contributes to enhance function or aesthetic appeal of electric violins, however, the shape is deemed equivalent to a mark 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.”

Article 3(1)(iii) of the Trademark Law

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;


Appeal Trial

In this regard, the Appeal Board also sustained examiner’s decision and dismissed applicant argument of inherent distinctiveness of the applied 3D shape.

In the meantime, the Board granted protection of the 3D shape due to acquired distinctiveness based on Article 3(2) of the Trademark Law.

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.

Acquired distinctiveness

YAMAHA Corporation has distributed electric violins “SILENT Violin” with a configuration of applied mark since 1997.
http://usa.yamaha.com/products/musical-instruments/strings/silentviolins/
The 3D shape has been continuously promoted in musical instruments magazines, a website and catalogues of applicant, and newspapers in a manner that readers can be attracted by its unique design. Winning various design awards and appearing in school textbooks as an example of industrial designs bolster remarkable reputation to the shape as well. Annual sale of “SILENT Violin” exceeding 100 million yen nationwide for last fifteen years is extremely higher than competitors.

Based on the foregoing, the Board stated;

It should be concluded that as a result of continuous and substantive use of the applied 3D mark since 1997, relevant consumers casting a glance at the mark are likely to conceive it as a source indicator of applicant business when used on electric violins.
Thus, the applied mark is eligible for registration in connection with electric violins of class 15 based on Article 3(2) of the Trademark Law.


Masaki MIKAMI, Attorney at IP Law
Founder of MARKS IP LAW FIRM 

 

 

Converse unsuccessful in obtaining 3D trademark protection of Chuck Taylor All Star sneakers

The Appeal Board of Japan Patent Office (JPO) decided to reject protection of a three-dimensional shape of Chuck Taylor All Star sneakers in connection with “sneakers” in class 25 (TM application no. 2014-79258) based on Article 3(1)(iii) of the Trademark Law by stating that the applied 3D mark, solely consisting of a shape commonly used on High Top Sneakers, is expectedly perceived as shape aiming to enhance aesthetic appeal in the mind of consumers and deemed inherently descriptive accordingly.
[Appeal case no. 2015-14749, January 18, 2017]

The Board admitted Chuck Taylor All Star sneaker as well as its name have become well-known as a source indicator of classic High Top Sneaker based on the facts that (i) Converse, a US merchant, has consecutively promoted the sneaker since 1917 without material change of the design, (ii) 5.2 million pairs of the sneaker were purchased in Japan since April 2008 at least, and (iii) it was continuously featured on newspapers and magazines.
However, the Board concluded it remained unclear whether the applied 3D shape has become well-known in itself and consumers are unlikely to recognize the shape as a source indicator on the following grounds.

  • Shape of goods essentially results from functional or aesthetic appeal. Unlike in the case of trademark depicted in the flat such as letter, figurative element, or symbols, consumers are neither accustomed nor likely to recognize 3D shape of goods as a role to indicate its source in general.
  • Similar sneakers have been distributed by many suppliers, e.g. GU, LEVIS, ADIDAS, RALPH LAUREN, PUMA, NIKE, MOONSTAR. As long as the shape already becomes a standard design of High Top Sneakers among competitors, granting exclusive protection to the applied 3D mark may disorder the status quo undesirably. Even if similar sneaks turn out to be imitations or counterfeits of Chuck Taylor All Star sneaker as applicant argued, unless applicant takes remedial actions to cease the products, the argument is less persuasive and inadmissible.
  • According to market survey conducted at Tokyo, Aichi and Osaka involving 1,500 interviewees, more than half of them could not perceive the applied 3D mark as Chuck Taylor All Star sneaker. 60% perception among primary consumers from age 10 to 49 is still insufficient.

It is undeniable that applicant neglected similar sneakers by numerous competitors for years and the circumstance adversely affected to the decision as market survey did in contradiction to its expected role.
Timing is of the essence to protect 3D shape of goods successfully.  

MASAKI MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM

3D shape of plastic clip bag closure is registrable due to acquired distinctiveness

Appeal Board of the JPO admitted to register a three-dimensional mark in the shape of plastic clip bag closure with respect to the goods of “Plastic clips for closing bags of bread products or packages of bread products; plastic bag opening stoppers for packages of bread products; plastic opening stoppers for bags of bread products” in class 20 [Appeal No. 2015-15882].

pcbc

INITIAL EXAMINATION

At an initial examination, the applied mark was totally refused under Article 3(1)(iii) of the Trademark Law since examiner considered the mark is deemed descriptive in relation to the designated goods and it has yet to acquire distinctiveness.

“the trademark in the application consists of a three-dimensional shape, and cannot be recognized as being equipped with a unique form which is hard to expect from the purpose and function of the designated goods or a decorative shape giving a special impression and the like, and traders and consumers just recognize shapes themselves of ‘plastic clips for closing bags of food; plastic bag opening stoppers for packages of food; plastic opening stoppers for bags of food’ which are the designated goods, and the shapes themselves cannot be recognized to have force for distinguishing relevant products from others, so that it is recognized as a trademark consisting solely of a mark indicating the shape of the designated goods in a common way.  Therefore, the trademark in the application falls under Article 3(1)(iii) of the Trademark Act. Furthermore, with the evidences submitted by the applicant, as a result of the use of the trademark in the application generally in the designated goods, it cannot be said that the trademark enables consumers to recognize the goods as being connected with a certain person’s business, so that the trademark does not meet requirements stipulated in Article 3(2) of the Trademark Act.”

 

APPEAL

Applicant, KWIK LOK CORPORATION, a US corporation immediately filed an appeal against the refusal and argued inherent distinctiveness as well as acquired distinctiveness.

The Appeal Board upheld examiner’s finding that the mark just indicates the shape of designated goods in a common way.

In the meantime, the Board denied examiner’s decision regrding acquired distinctiveness of the mark in relation to the goods in question by taking into consideration of 100% market share and 90% brand awareness among relevant consumers.

“goods in the shape of the applied 3-D mark have been continuously manufactured by the Japanese subsidiary of KWIK LOK CORPORATION for about 9 years since 2007 until now, and about 2,600 million pieces of that are sold over the country every year, and it is recognized that the almost 100% of the share is possessed in the opening stoppers for bags of loaves of bread. Furthermore, the promotional advertising of goods in the shape of the applied 3-D mark has been continuously carried out by setting up a booth at the exhibitions for the industry and the like, and the awareness in the makers for manufacturing and selling the bread products, which are the main consumers, reaches 90%. Then, it is reasonable that the applied mark came to enable consumers to recognize the goods in relation to business of the applicant, as a result of continuous use for a long period by Japanese subsidiary of the applicant, concerning “plastic clips for closing bags of bread products or packages of bread products; plastic bag opening stopper for packages of bread products; plastic opening stopper for bags of bread products” which just correspond to the designated goods in class 20.”

 img_1028-002

Article 2(4) of the Trademark Law

Article 2(4) of the Trademark Law stipulates that goods in the shape of a mark satisfies requirement to affix the mark to goods provided for in Article 2(3).


Article 2(3)

(3) “Use” with respect to a mark as used in this Act means any of the following acts:

 (i) to affix a mark to goods or packages of goods;

 (ii) to assign, deliver, display for the purpose of assignment or delivery, export, import or provide through an electric telecommunication line, goods or packages of goods to which a mark is affixed;

 (iii) in the course of the provision of services, to affix a mark to articles to be used by a person who receives the said services (including articles to be assigned or loaned; the same shall apply hereinafter);

 (iv) in the course of the provision of services, to provide the said services by using articles to which a mark is affixed and which are to be used by a person who receives the said services;

 (v) for the purpose of providing services, to display articles to be used for the provision of the services (including articles to be used by a person who receives the services in the course of the provision of services; the same shall apply hereinafter) to which a mark is affixed;

 (vi) in the course of the provision of services, to affix a mark to articles pertaining to the provision of the said services belonging to a person who receives the services;

 (vii) in the course of the provision of services through an image viewer, by using an electromagnetic device (an electromagnetic device shall refer to any electronic, magnetic or other method that is not recognizable by human perception; the same shall apply in the following item), to provide the said services by displaying a mark on the image viewer; or
(viii) to display or distribute advertisement materials, price lists or transaction documents relating to goods or services to which a mark is affixed, or to provide information on such content, to which a mark is affixed by an electromagnetic device.

 Article 2(4)


(4) To affix a mark to goods or other articles provided for in the preceding paragraph shall include to form in the shape of the mark goods, packages of goods, articles to be used for the provision of services, or advertisement materials relating to goods or services.

1187hirai%e4%bf%ae%e6%ad%a3003_2

Masaki MIKAMI, Attorney at IP Law, Founder of MARKS IP LAW FIRM

How to avoid a descriptive mark from being refused by JPO

The trademark law prohibits any mark incapable of serving as a source indicator from being registered under Article 3 (1).

Article 3(1) of the trademark law

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:

(i) consists solely of a mark indicating, in a common manner, the common name of the goods or services;

(ii) is customarily used in connection with the goods or services;

(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;

(iv) consists solely of a mark indicating, in a common manner, a common surname or name of a juridical person;

(v) consists solely of a very simple and common mark; or

(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.

How to overcome refusal under Article 3(1)

We have three options to overcome the refusal under Article 3(1).

Option 1: Opposing to examiner’s assertion and dispute inherent distinctiveness.

Examiner often withdraws a refusal if we could convince the examiner of inherent distinctiveness in a response. Mostly, where applied mark is composed of two or three words, it is worthy of arguing distinctiveness of the mark in its entirety even though respective word is deemed descriptive.

 

Option 2: Arguing acquired distinctiveness of applied mark if applicant has substantial used of the mark.

A mark having functioned as a source indicator resulting from extensive and substantial use can be exceptionally registered under Article 3(2) of the trademark law regardless of descriptive meaning of the mark.

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 thetrademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person.

 

Option 3: Asserting a unique appearance of the mark even if admittedly the mark itself is descriptive without such appearance.

If applied mark contains figurative elements or depicts word(s) with an unfamiliar font design, it is still possible to overcome the refusal since Article 3(1) is applicable to a mark depicted “in a common manner”.

In other words, descriptive term(s) written in an uncommon manner can be registered regardless of original meaning of the mark.

Needless to say, it is not allowed to amend font design of applied mark during examination based on Article 16-2. Therefore, third option should be taken into consideration prior to filing an application.

Article 16-2(1)
Where an amendment made to the designated goods or designated services, or to the trademark for which registration is sought as stated in the application, is considered to cause any change of the gist thereof, the examiner shall dismiss the amendment by a ruling.

 

1187hirai%e4%bf%ae%e6%ad%a3003_2Masaki MIKAMI – Attorney at IP Law, Japan
MARKS IP LAW FIRM

“AQUA COLLAGEN GEL” is not a descriptive term, but a source indicator by means of acquired distinctiveness.

On October 27, 2016, the IP High Court ruled to uphold a decision by JPO declaring cancellation of opposed mark “ Dr.Coo / AQUA COLLAGEN GEL” due to conflict with senior registrations containing a term of “Aqua-Collagen-Gel” (Case no. Heisei 28 (Gyo-ke) 10090).

JPO declared cancellation of the opposed mark “Dr.Coo / AQUA COLLAGEN GEL” (see below) covering goods of “Collagen gel cosmetics; collagen gel soaps” in class 3 on the grounds that the mark is confusingly similar to senior trademark registrations cited by an opponent, an owner of Dr. Ci:Labo brand.

 aqua-collagen-gel

Applicant of the opposed mark filed a lawsuit against the decision to the IP High Court. In the lawsuit, applicant alleged that it was JPO’s error to have considered “AUQ COLLAGEN GEL” as a distinctive term in relation to the designated goods of class 3 since the term merely describes quality or material of goods in dispute and thus it can’t even take a role of source indicator.

 

In view of material facts that an opponent has consecutively used the term “Aqua-Collagen-Gel” on cosmetics since 1999, cumulative quantity of the cosmetics amounts to 30 million by the year 2015, recent annual sale of the cosmetics exceeds 12 billion JP Yen and frequent TV advertisement and publications, the IP High Court admitted the term “Aqua-Collagen-Gel” has independently served function as a source indicator of the opponent even if opponent’s cosmetics depict so-called house mark “Dr. Ci:Labo” adjacent to Aqua-Collagen-Gel”.

Based on above findings, the Court dismissed applicant’s argument to insist dissimilarity of both marks on the grounds that average consumers are likely to pay attention to a term “AQUA COLLAGEN GEL” in configuration of the opposed mark and consequently associate the term with opponent products irrespective of existence of “Dr.Coo”.

Registrability of two alphabetical letter trademarks in Japan

According to Article 3(1)(v) of the Japanese Trademark Law,

Any trademark solely consisted of a very simple and common mark may not be registered.

 Trademark Examination Guideline(TEG) pertinent to the article (Chapter I, Part 7) specifies that:

Trademarks composed of (a) one or two alphabetical letter, (b) two alphabetical letters hyphened, or (c) one or two alphabetical letter preceded or followed by a term representing business entity, e.g. “Co.” “Ltd.”, are not registrable on the grounds of Article 3(1)(v).

 In the meantime, trademarks consisted of (a) two alphabetical letters combined with “&”, (b) two alphabetical letters depicted in monogram, (c) Japanese katakana characters transliterating two alphabetical letters, or (d) two alphabetical letter represented in a unique design do not fall under the article.

 http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/tt1302-002/1-7.pdf

You had better note that TEG admits to register Japanese katakana characters transliterating two alphabetical letters. That means, even if alphabetical letter trademark would fail to register due to the article, you may have an option to register transliteration of the mark in Japan.
Consequently, one or two alphabetical letter trademarks in standard character, including acronyms and abbreviations are under normal circumstances not registrable.
 As an exception, provided that the producer so effectively markets the product with the mark that consumers come to immediately associate the mark with only that producer of that particular kind of goods and thus one or two alphabetical letter trademarks attain acquired distinctiveness, the marks are entitled to trademark protection on the basis of Article 3(2).

 

Article 3(2) of the Japanese Trademark Law stipulates that:

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.