Trademark registration for Kikkoman’s Soy sauce 3D Bottle

In October 11, 2016, Kikkoman Corporation, the world’s leading producer of soy sauce, filed an application for trademark registration at the Japan Patent Office (JPO) for the following three-dimensional colored mark for soy sauce in class 30.

Red-capped Kikkoman soy sauce dispenser

Iconic red-capped Kikkoman soy sauce dispenser was introduced in 1961 and has been in continuous production ever since. It was developed by Kenji Ekuan, a Japanese Navy sailor former naval academy student who dedicated his life to design when he left the service. Its unique shape took three years and over a hundred prototypes to perfect, but the teardrop design and dripless spout have become a staple of restaurant condiments all around the world. The bottle’s design hasn’t changed over the past 50 years.

JPO Examination/Acquired distinctiveness

The JPO examiner initially notified her refusal due to a lack of inherent distinctiveness in relation to say sauce.

In a response to the office action, Kikkoman argued acquired distinctiveness of the 3D bottle arising from uniqueness of its shape and substantial use for over five decades.

According to news release from Kikkoman, over 500 million of the bottles have been sold since the design was first introduced and distributed in approximately a hundred countries worldwide. Red-capped Kikkoman soy sauce dispenser has already been registered as 3D mark in US, EU, Ukraine, Norway, Russia, Australia.

In March 30, 2018, the JPO granted trademark registration based on Article 3(2) of the Trademark Law by finding acquired distinctiveness of the 3D color mark as a source indicator of Kikkoman.
[TM Registration No. 6031041]

JPO eventually allowed registration of color marks since commencement of Non-Traditional trademark application in 2015

On March 1st, 2017, the JPO announced to allow registration of color marks for the first time ever since commencement of Non-Traditional trademark application in April, 2015.

The trademark law of Japan protects sound marks, motion marks, position marks, hologram and color marks as well as traditional marks provided they meet all the other criteria for a valid trademark.

First color marks registration

The honor of first color marks registration went to (i) a three-color-combination mark in blue, white and black for goods of “erasers” in class 16 owned by Tombow Pencil Co., Ltd. and (ii) a seven-color-combination mark in white, orange, white, green, white, red and white for retail services in class 35 owned by Seven-Eleven Japan Co., Ltd..

Tombow Pencil Co., Ltd. has used the three-color-marks on erasers and other stationery.

tombow

The seven-color-marks is a symbolic design representing well-known convenience store of Seven-Eleven Japan Co., Ltd.

%e3%82%bb%e3%83%96%e3%82%a4%e3%83%ac

According to the announcement from the JPO, 492 applications for color marks were filed since April, 2015 so far. Above color marks were both filed on the very beginning day of Non-Traditional trademark application. Taking into consideration of a six-month examination period on average for traditional marks, it has obviously spent substantial time even when it compares with other Non-Traditional marks. As of February 20, 2017, 110 sound marks are registered among 517 applications. 23 position marks are registered among 345 applications. 65 motion marks are registered among 123 applications.

It is anticipated that the JPO expedites to terminate examination for color marks in the months ahead.

1187hirai%e4%bf%ae%e6%ad%a3003
MASAKI MIKAMI – Attorney at IP Law, JAPAN
Founder of MARKS IP LAW FIRM