The Appeal Board of Japan Patent Office (JPO) decided to reject protection of a three-dimensional shape of Chuck Taylor All Star sneakers in connection with “sneakers” in class 25 (TM application no. 2014-79258) based on Article 3(1)(iii) of the Trademark Law by stating that the applied 3D mark, solely consisting of a shape commonly used on High Top Sneakers, is expectedly perceived as shape aiming to enhance aesthetic appeal in the mind of consumers and deemed inherently descriptive accordingly.
[Appeal case no. 2015-14749, January 18, 2017]

The Board admitted Chuck Taylor All Star sneaker as well as its name have become well-known as a source indicator of classic High Top Sneaker based on the facts that (i) Converse, a US merchant, has consecutively promoted the sneaker since 1917 without material change of the design, (ii) 5.2 million pairs of the sneaker were purchased in Japan since April 2008 at least, and (iii) it was continuously featured on newspapers and magazines.
However, the Board concluded it remained unclear whether the applied 3D shape has become well-known in itself and consumers are unlikely to recognize the shape as a source indicator on the following grounds.

• Shape of goods essentially results from functional or aesthetic appeal. Unlike in the case of trademark depicted in the flat such as letter, figurative element, or symbols, consumers are neither accustomed nor likely to recognize 3D shape of goods as a role to indicate its source in general.
• Similar sneakers have been distributed by many suppliers, e.g. GU, LEVIS, ADIDAS, RALPH LAUREN, PUMA, NIKE, MOONSTAR. As long as the shape already becomes a standard design of High Top Sneakers among competitors, granting exclusive protection to the applied 3D mark may disorder the status quo undesirably. Even if similar sneaks turn out to be imitations or counterfeits of Chuck Taylor All Star sneaker as applicant argued, unless applicant takes remedial actions to cease the products, the argument is less persuasive and inadmissible.
• According to market survey conducted at Tokyo, Aichi and Osaka involving 1,500 interviewees, more than half of them could not perceive the applied 3D mark as Chuck Taylor All Star sneaker. 60% perception among primary consumers from age 10 to 49 is still insufficient.

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It is undeniable that applicant neglected similar sneakers by numerous competitors for years and the circumstance adversely affected to the decision as market survey did in contradiction to its expected role.
Timing is of the essence to protect 3D shape of goods successfully.  

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