IP High Court ruled a commonly used shape of package is incapable of serving as a source indicator

On December 22, 2016, the IP High Court (Tokyo) upheld decision of Tokyo District Court (Case no. Heisei 27(Wa)33398), and ordered dismissal of appeal ruling that:

  • Appellant’s good serves as a source indicator due to designs, color, gloss, and texture depicted on external package of the goods, not merely by cube geometry of the package.
  • In view of severe difference in design, color, word mark appeared on the package, consumers will perceive such distinctive elements as “configuration of goods” provided under Article 2(4) of the Unfair Competition Law rather than shape of the package itself.
  • Configuration of goods is incapable of serving as a source indicator unless it comprises prominent distinction. Overall shape of package composed of appellant’s goods is quite simple and thus a mere fact of identical shape with respective package is insufficient to conclude that the shape plays a role of source indicator of goods in dispute.

package

Based on the foregoing, the court denied appellant’s motion to dismiss a decision of trial court on the grounds that overall package of appellant’s goods neither corresponds to “indication of goods” provided under Article 2(1)i of the Unfair Competition Law, nor “configuration of goods” under Article 2(1)iii without combination of designs, color, gloss, and texture depicted on the package.

Unfair Competition Law

Article 2(1)i
The termunfair competition” as used in this Act shall mean any of the following:

(i) creation of confusion with another person‘s goods or business by use of an indication of goods, etc. (which shall mean a name, trade name, trademark, mark, container or package, or any other indication of goods or trade pertaining to a person‘s business; the same shall apply hereinafter) that is identical or similar to an indication of goods, etc. wellknown among consumers used by said person, or assignment, delivery, display for the purpose of assignment or delivery, export, import or provision through a telecommunications line of goods bearing the such an indication of goods, etc.;

 

Article 2(1)iii
(iii) assignment, lease, display for the purpose of assignment or lease, export or import of goods which imitate the form of another person‘s goods (excluding forms indispensable to ensuring the functioning of said goods);

 

Article 2(4)
The term “configuration of goods” as used in this Act shall mean the external and internal shape of goods and their associated patterns, color, gloss, and texture, which may be perceived by users when making ordinary use of the goods.

Unfair Competition Law plays a key role in a dispute involving unregistered mark or trade dress. The case teaches us a good lesson.

A coincidence in the shape of package is insufficient in a lawsuit based on the Unfair Competition Law unless the shape contains prominent distinction in itself.

Appeal Case no. IP High Court Heisei28(Ne)10084

1187hirai%e4%bf%ae%e6%ad%a3003_2Masaki MIKAMI – Attorney at IP Law (Japan)

MARKS IP LAW FIRM

Can shape of goods be protected under the Unfair Competition Prevention Law?

Imitation of training chopsticks

Plaintiff filed a lawsuit against defendant to cease to manufacture and distribute defendant’s training chopsticks in the name of “Deluxe Training Chopsticks” by alleging it constitutes confusion with, or imitation of plaintiff’s well-known training chopsticks in the name of “Edison Chopsticks” based on violation of the Unfair Competition Prevention Law.

chopsticks

 The IP High Court decision

In a dispute of imitation of training chopsticks, the IP High Court admitted Article 2(1)(i) of the Unfair Competition Prevention Law is interpreted to include shape of goods in the meaning of “another person’s goods or business by use of an indication of goods, etc. (which shall mean a name, trade name, trademark, mark, container or package, or any other indication of goods or trade pertaining to a person’s business)”, provided that the shape has acquired “secondary meaning” as a consequence of substantial use even if it is not aimed to serve as a source indicator.

 Article 2(1)(i) of the Unfair Competition Prevention Law

Article 2

(1) The term “unfair competition” as used in this Act shall mean any of the following:

(i) creation of confusion with another person’s goods or business by use of an indication of goods, etc. (which shall mean a name, trade name, trademark, mark, container or package, or any other indication of goods or trade pertaining to a person’s business; the same shall apply hereinafter) that is identical or similar to an indication of goods, etc. well-known among consumers used by said person, or assignment, delivery, display for the purpose of assignment or delivery, export, import or provision through a telecommunications line of goods bearing the such an indication of goods, etc.;

Secondary meaning for shape of goods

Besides, in the assessment of secondary meaning, the shape is required:

(1)   To contain a distinctive character distinguishable from other similar goods objectively, and

(2)   To be exclusively used by specific entity for a long period of time or published for advertisement extensively, and thus the goods gets known for a source indicator of the entity among relevant consumers

It should be noted that where the shape simply results from technical function and utility of the goods and leaves no other option to adopt an alternative configuration, such shape should not be protected under Article 2(1)(i) of the Unfair Competition Prevention Law.

In the meantime, where the shape leaves other option to adopt an alternative configuration, Article 2(1)(i) of the Unfair Competition Prevention Law is applicable on the condition that the shape meet above requirements, namely (1) distinctive character and (2) well-knownness.

 

Conclusion

Based on above rules, the IP High Court found that the shape of plaintiff’s Edison chopsticks evidently derives from technical function and utility since it serves directly for consumers to learn how to use chopsticks in a correct manner.

The IP High Court admitted the shape leaves other potion to adopt an alternative configuration, however, denied plaintiff’s argument in view of lack of distinctive character since Edison chopsticks consists of a common configuration with equivalent goods. (Heisei 28 Ne 10028 ruled on July 27, 2016)