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 

 

 

The IP High Court ruled a trademark “TOMATO SYSTEM” is deemed similar to “TOMATO” in connection with the service of computer programming

On March 23, 2017, in a lawsuit disputing registrability of an applied word mark “TOMATO SYSTEM” in standard character designating goods of electronic machines, apparatus and parts thereof (Class 9), and services of computer software design, computer programing, or maintenance of computer software; technological advice relating to computers, automobiles and industrial machines; testing or research on machines, apparatus and instruments; providing computer programs on data networks (Class 42), the IP High Court upheld the original refusal decision rendered by the JPO Appeal Board and dismissed the lawsuit filed by applicant, Ishiguro Medical System Co., Ltd. [Case No. Heisei 28 (Gyo-Ke) 10208].

 


 

JPO decision

Initially, JPO examiner rejected to register the applied mark “TOMATO SYSTEM” due to conflict with senior registration no. 4394923 for word mark “TOMATO” in standard character designating services of technological advice relating to computers; computer software design in Class 42 (Citation 1) and no. 5238348 for “tomato” with a device mark designating retail/wholesale services for electrical machinery and apparatus in Class 35 (Citation 2). Applicant sought to file an appeal against the rejection by arguing dissimilarity of both marks, however, the Appeal Board decided to refuse the applied mark on the basis of Article 4 (1) (xi) of the Trademark Law in a decision dated July 28, 2016 [Appeal Case No. 2016-2278].

In the decision, the Board concluded “TOMATO”, an English term meaning red edible fruit, does not imply any descriptive meaning in association with the designated goods and services. In the meantime, a term “SYSTEM” easily reminds consumers of meanings to suggest organized, purposeful structure that consists of interrelated and interdependent elements when used on machines, apparatus and computer software. Unless we find conceptual connection between two terms, it is allowed to segregate the applied mark into each element in the assessment of mark comparison. If so, relevant consumers at an ordinary care are likely to consider the term “TOMATO” as a predominant portion of the applied mark. Based on the foregoing, the Board judged the applied mark is deemed similar to Citation 1 and 2.


IP High Court 

In the lawsuit, plaintiff claimed the Board decision was defectively inappropriate since it is not allowed to segregate each term composing the applied mark in light of tight combination of both terms and ambiguous meaning of the term “SYSTEM” in relating to designated goods and services.

The Court upheld the Board decision by declaring “SYSTEM” is less distinctive in connection with goods or services relating to information processing. Therefore, it is permissible to segregate the applied mark into each element and to judge similarity of mark based on a predominant element of the mark in dispute.



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