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].

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.”

 

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.

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