タグ: 3D mark

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

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