カテゴリー: Three dimensional mark

Japan IP High Court gives Green Light to 3D “Godzilla” shape as Trademark

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On October 30, 2024, the Japan IP High Court disaffirmed the administrative decision by the Japan Patent Office (JPO) not to register the 3D shape of the eponymous character from the film “Shin Godzilla” as a trademark.
[Judicial case no. Riewa6(Gyo-ke)10047]

GODZILLA

Godzilla, a science-fiction monster spawned from the waste of nuclear tests that resembles an enormous bipedal lizard was released in Japanese film in 1954. The character has since become an international pop culture icon. After the original 1954 cinematic masterpiece, Godzilla has appeared in more than 30 films spanning seven decades and several eras produced by Toho Co., Ltd.

https://godzilla.com/blogs/movies

On July 29, 2016, the film “Shin Godzilla (Godzilla Resurgence)” produced by Toho was theatrically released as a 31st film of Godzilla trilogy. The film grossed $79 million worldwide, making it the highest-grossing live-action Japanese film of 2016. It received 11 Japan Academy Prize nominations and won seven, including Picture of the Year and Director of the Year.

https://godzilla.com/blogs/movies

Toho Co. filed a trademark application with the JPO for the 3D shape of Godzilla’s fourth form in the film “Shin Godzilla”, the final evolutionary form of the character appearing in the film, as a trademark for use in stuffed toys, figures, dolls and toys of class 28 on September 29, 2020 (TM App no. 2020-120003).

The JPO examiner, however, rejected the 3D mark based on Article 3(1)(iii) of the Trademark Law due to a lack of distinctiveness in relation to the goods. The JPO Appeal Board also dismissed an appeal on the same ground and held that the 3D shape has not acquired distinctiveness because of insufficient use of the 3D mark in relation to the goods in question (Appeal case no. 2021-11555).

On May 10, 2024, Toho filed an appeal to the IP High Court and called for the JPO decision to be revoked.

IP High Court decision

The IP High Court affirmed the findings of the JPO to reject the 3D shape due to a lack of inherent distinctiveness in relation to the goods in question.

In the meantime, the court found that the JPO errored in applying Article 3(2) and assessing the acquired distinctiveness of the 3D mark by stating that:

  1. Toho has produced and distributed 30 films in the “Godzilla” series over a 69-year period from 1954 to 2023, and although the shape of the “Godzilla” character in these films changed slightly, the basic shape of the character was largely the same, and the form of the Godzilla character with its countless folds and complex rocklike texture is distinctive among other monster characters of the same type.
  2. The applied mark represents the 3D shape of Godzilla’s fourth form in the film “Shin Godzilla”, the final evolutionary form of the character appearing in the film. It has the same features with the monster appeared in the previous “Godzilla” films. It is obvious that the basic shape of the “Godzilla” character has been widely recognized among general public to indicate a monster character produced by Toho even before the release of the film “Shin Godzilla”.
  3. Even if the term “use” under Article 3(2) of the Trademark Law should be limited to actual use of a sign strictly identical with the applied mark, in determining whether a consumer has come to “recognize the goods bearing the applied mark to indicate a specific source” under the article, it should be reasonable or rather necessary to consider the influence of the entire “Godzilla” films including “Shin Godzilla” on consumers’ recognition to the applied 3D mark.
  4. The interview conducted in September, 2021, targeting 1,000 interviewees of men and women aged 15 to 69 nationwide, showed an extremely high level of recognition, namely, 64.4% answered “Godzilla” or “Shin Godzilla” to the open-ended responses (70.8% among men).

Japan IP High Court Decision: 3D shape of Stokke “TRIPP TRAPP” high chair Unprotectable under Copyright Law

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On September 25, 2024, the Japan IP High Court dismissed an appeal by Peter Opsvik AS and Stokke AS who had claimed copyright protection for their award-winning, best-selling children’s chair, “TRIPP TRAPP.”

[Court case no. Reiwa5(ne)10111]

TRIPP TRAPP

In 2021, Peter Opsvik AS and Stokke AS, as co-plaintiffs, initiated legal proceedings against Noz Corporation at the Tokyo District Court on the grounds of copyright infringement and the Unfair Competition Prevention Law.

The plaintiffs have asserted that Noz Hopple’s “Choice Kids” and “Choice Baby” chairs (see below right) are liable for copyright infringement and prohibited under the Unfair Competition Prevention Law in relation to their iconic “TRIPP TRAPP” high chair (see below left), and sought damages in the amount of 14 million JPY (approximately 98,000USD) in the complaint.

However, the Tokyo District Court did not rule in favor of the plaintiffs in a decision on the merits, rendered on September 28, 2023 [Reiwa3(wa)31529].

To contest, the plaintiffs filed an appeal with the IP High Court, requesting the cancellation of the District Court decision.

IP High Court decision

The IP High Court found that the distinctive shape of “TRIPP TRAPP” perse has played a significant role in identifying the source of the plaintiff’s chair. However, the court questioned resemblance between the “TRIPP TRAPP” chair and the defendant chairs by globally taking account of their respective appearances and overall impressions.

Pertinent to a legal protection to the “TRIPP TRAPP” chair under the Copyright Law, the court held that:

In determining appropriate protection for creative works on the shape of utility articles, it is necessary to pay due attention to the purposes, nature, and content of rights provided by the Copyright Law and the Design Law in Japan.

To the extent that creative expression on utility articles is visible and causes aesthetical effect in the mind of consumers, it will not require protection under the Copyright Law since the Design Law takes an initiative to provide sufficient protection for such expression.

Based on these points, it is reasonable to conclude that creative shape of utility articles is protectable under the Copyright Law only where it contains an independent part that is an object of aesthetic appreciation apart from its practical function or when the entire article is deemed to have been created exclusively for the purpose of aesthetic appreciation.

The court has an opinion that the unique features of the “TRIPP TRAPP” chair are mainly serving to realize the practical function as a height adjustable children’s chair and aim to achieve basic function of chair as a whole. Therefore, it is difficult to separate the features apart from basic function of the plaintiff’s product as a chair. In other words, even if the plaintiff’s chair gives rise to an aesthetic effect in the mind of consumers as a whole, the unique feature of the chair is not an object of independent aesthetic appreciation apart from its practical function as a chair.

Obviously, there is no evidence to find that the plaintiff’s chair was made exclusively for the purpose of aesthetic appreciation.

Besides, the defendant’s chairs do not have the unique function of the plaintiff’s product. Due to a clear distinction in overall impression of respective products, the IP High Court believes the defendant was not liable for copyright infringement consequently.

P&G Unsuccessful attempt to register 3D shape of SK-II bottle

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In an attempt to register TM App no. 2020-1611 for 3D mark representing a bottle shape of the SK-II Facial Moisturizing Lotions, the Japan Patent Office (JPO) upheld the examiner’s rejection and dismissed the appeal filed by The Procter & Gamble Company (P&G).
[Appeal case no. 2022-6, decided on May 9, 2024]

SK-II

P&G filed a trademark application for 3D bottle shape of the SK-II cosmetic lotions (see below) in class 3 with the JPO on February 14, 2020 (TM App no. 2020-1611).

SK-II is a Japanese-based multinational beauty brand with premium skincare solutions sold in East Asia, North America, Europe, and Australia, launched in the early 1980s.

Allegedly, domestic sales of the “SK-II” facial treatment essence (moisturizing lotions) contained in the applied 3D mark were approximately JPY 10 billion to 16.5 billion in each of the fiscal years from 2016 to 2020.

Article 3(1)(iii)

The JPO examiner rejected the 3D mark based on Article 3(1)(iii) of the Japan Trademark Law due to a lack of inherent distinctiveness.

Article 3(1)(iii) is a provision to prohibit registration of any mark that is descriptive in relation to designated goods and service. Trademark Examination Guideline (TEG) refers to 3D bottle shape of goods as an example subject to the article.

Where trademark is merely recognized as the shapes of designated goods (including shape of packages), it is evaluated just to indicate the “shape” of the goods. Moreover, the same principle shall apply to cases where a trademark is recognized as part of the shapes of designated goods (including their packages).

Article 3(2)

P&G argued acquired distinctiveness of the 3D mark as a result of substantial use. However, the examiner rejected the argument, stating that since the applied mark has been consistently used with the word mark “SK-II” on every bottle, there is no reason to believe that the 3D shape perse has played a role in identifying the source of the cosmetics.
Therefore, the applied mark shall not be registrable based on Article 3(2) of the Trademark Law due to a lack of acquired distinctiveness.

JPO decision

The JPO Appeal Board found the applied mark should be rejected in accordance with Article 3(1)(iii) due to the prevalence of cylindrical bottles in the contexts of cosmetics and other industries.

In its decision, the Board noted that a considerable amount of sales had been made to date and that advertising and promotional activities had been conducted at a considerable expense. The SK-II cosmetics bearing the 3D mark have been extensively advertised through a variety of channels, including magazine advertisements, TV commercials, events, and other campaign activities. They have also been widely covered by the web media and other media outlets.

In the meantime, the Board pointed out the use of distinctive words, such as “SK-II”, “SECRET KEY II”, “MAX FACTOR” etc., on the bottle of the CK-II facial moisturizing lotions. In this respect, there is no sufficient evidence and material featuring the 3D mark so that consumers at the sight of advertisements can consider the bottle shape as a source indicator.

Besides, P&G did not produce evidence of brand awareness survey to demonstrate acquired distinctiveness of the bottle shape. The registration of the same mark in other jurisdictions, such as the United Arab Emirates and South Korea, does not have any binding power in Japan when it comes to evaluating distinctiveness.

Based on the above findings, the Board concluded that the 3D mark per se has not acquired distinctiveness and should not apply Article 3(2).

Hermes Victory with Invalidating Birkin Lookalike Design

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The Japan IP High Court has ruled in favor of Hermes in a dispute over the validity of Design Reg no. 1606558 by finding a likelihood of confusion with Hermes.
[Court case no. Reiwa5(Gyo-ke)10113, decided on February 19,2024]

Design Registration no. 1606558

Plaintiff, Toms and Collective Co., Ltd applied a 3D shape of bag (see below) with the JPO on August 23, 2017 (Design App no. 2017-18064). The JPO, as a result of substantive examination, granted protection of the design on May 18, 2018.

Defendant, Hermes International filed an invalidation action with the JPO on January 13, 2023 and claimed the design registration shall be invalidated in contravention of Article 5(ii) of the Japan Design Law.

Article 5(ii) provides a design that has a risk of causing confusion with goods of another person’s business may not be registered.

Hermes referred to three trademark registrations that are relevant to the 3D shape of Birkin bags (TM Reg no. 5438059) and two “H” logos (TM Reg nos. 4672965 and 5864813) in class 18. They argued that the disputed design is likely to cause confusion with Hermes when used on bags due to the famousness of the registered marks and the resemblance between the disputed design and Hermes’ marks.

Invalidation decision by JPO

On September 4, 2023, the JPO Trial Board decided to invalidate the disputed mark by stating that:

  1. As there is a remarkable gap between the disputed design and 3D shape of Birkin bags, the Board has no reason to find a likelihood of confusion with TM Reg no. 5438059.
  2. The Board questions whether the “H” logo for TM Reg no. 4672965 (H1 mark) has become famous as a source indicator of Hermes. Therefore, the disputed design would not cause confusion with H1 mark.
  3. Meanwhile, Meanwhile, the plaintiff admits that the ‘H’ logo for TM Reg no. 5864813 (H2 mark) has become famous for identifying Hermes. The padlock in the disputed design bears a resemblance to the H2 mark that has been used on the buckles of Hermes bags. As a result, relevant consumers are likely to confuse the bags with Hermes upon seeing the disputed design, particularly the padlock.

IP High Court decision

On October 11, 2023, the Plaintiff filed an appeal with the IP High Court and requested the cancellation of the invalidation decision made by JPO.

In the lawsuit, Plaintiff argued that the padlock should not be considered a prominent element of the design, as it is merely an accessory to the disputed design that represents a shape of the bag as a whole.

Screenshot taken from https://annecoquine.com/

The judge stated that any partial shape of the entire design is subject to assessment in adapting Article 5(ii). It is unrelated to the “prominent element” used to assess design similarity under Article 3(1)(iii) of the Design Law.

The judge also addressed that it is irrelevant to consider whether Plaintiff promotes bags representing the disputed design but without the padlock.

Based on the foregoing, the court dismissed all allegations and invalidated the disputed design due to a likelihood of confusion with Hermes.

CASIO Successful in Registering 3D Shape of “G-SHOCK” Watch

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The Japan Patent Office (JPO) disaffirmed the examiner’s rejection and granted protection to the 3D shape of the Casio “G-Shock” watch by finding acquired distinctiveness as a result of substantial use over the past four decades.

[Appeal case no. 20212-11052, Gazette issued date: June 30, 2023]

CASIO “G-SHOCK” Watch

On April 28, 2021, Casio Computer Co., Ltd. filed a trademark application for the 3D shape of the first-released G-Shock, the DW-5000 (see below) to be used on ‘watches’ in class 14 with the JPO (TM application no. 2021-52961).

Rejection by JPO Examiner

On April 11, 2022, the JPO examiner rejected the 3D mark based on Article 3(1)(iii) of the Japan Trademark Law.

In the rejection, taking into consideration various decorations or patterns on the belt and case of wristwatches by other watchmakers (see below), the examiner considered the 3D shape of the applied mark lacks distinctiveness as a source indicator of wristwatch because relevant consumers and traders would recognize it simply represents a common shape of wristwatch adopted to enhance aesthetic function and psychological effect on the goods in question.

The examiner negated the acquired distinctiveness of the 3D shape of “G-Shock”, the DW-5000 regardless of continuous use on Casio’s wristwatches for 40 years on the grounds that:

  1. On the goods, catalogs, and advertisements, wordmarks “CASIO” and “G-SHOCK” have been constantly used as well.
  2. The “G-Shock” wristwatch collection has a lot of models that have a different appearance from the applied 3D shape.
  3. The market research that targeted a total of 1,100 men and women aged over 16 resulted in 55.52% of the interviewees answering “Casio” or “G-Shock” to an open-ended question when shown the 3D shape of the DW-5000. The percentage is insufficient to admit the 3D shape per se has acquired distinctiveness as a source indicator.
A screen shot from casio.com

On July 15, 2022, Casio filed an appeal against the rejection and disputed the acquired distinctiveness.

JPO Appeal Board decision

The Appeal Board affirmed the examiner’s finding in applying Article 3(1)(iii) of the Trademark Law.

In the meantime, the Board paid attention to the fact 66.27% of the interviewees selected “Casio” or “G-Shock” to a closed-ended question, where it mentions G-Shock along with other close competitors.

Provided that more than 60% of consumers associate the 3D shape with Casio or G-Shock, and the shape has the reputation as a representative model of the G-Shock with its unique shock-resistance form, the Board has a reason to believe the 3D shape per se has acquired a substantial degree of recognition among relevant consumers and played a role in source indicator of Casio’s wristwatches. If so, the examiner errored in applying Article 3(2) of the Trademark Law.

Based on the foregoing, the Board decided to cancel the examiner’s rejection and admitted registration of the applied mark exceptionally based on Article 3(2).

Hermes Wins Birkin & Kelly Bag’s 3D Trademark Infringement Lawsuit

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On March 9, 2023, the Tokyo District Court awarded HERMES INTERNATIONAL JPY5,640,112 for infringement of its trademark right pertinent to the 3D shape of the Birkin bag and Kelly bag.

[Judicial case no. Tokyo District Court – Reiwa3(wa)22287]

3D mark of Hermès Birkin and Kelly Bag

HERMES INTERNATIONAL, a French luxury fashion house, has owned Japanese trademark registration no. 5438059 for the 3D shape of the “Birkin” bag and no. 5438058 for the “Kelly” bag in connection with handbags (class 25) since 2011 by successfully demonstrating acquired secondary meaning as a specific source indicator of Hermès’ luxury bags.

Birkin and Kelly Bag Imitations

Hermes sued NAO INTERNATIONAL Co., Ltd. at the Tokyo District Court for violating its trademark right and the unfair competition prevention law by allegedly selling 214 Birkin look-alike bags and 184 Kelly look-alike bags in Japan with a price tag of JPY2,270 (approx. USD20) at their brick-and-mortal shops and online shop from December 20, 2019, to February 13, 2021.

Court decision

The Tokyo District Court found that the defendant’s bags respectively resemble 3D marks representing Hermès Birkin and Kelly Bag in an appearance on the ground that the defendant’s bags contain a basic and unique configuration enabling to distinguish Hermès Birkin and Kelly Bag from others. A difference in details is trivial and would not give rise to a distinctive impression in the mind of consumers.

Taking into consideration the fact that both bags are promoted for sale at the department store, the court has a reason to believe relevant consumers are likely to confuse the source of the defendant’s bags with Hermes.

Even though there is a severe price gap between the Hermes bag and the defendant bag, bearing in mind that authentic second-hand Hermès handbags are sold relatively at low prices, such a price gap would be anything but sufficient to negate the likelihood of confusion.

The court measured damages to recover (i) the defendant’s actual profits of infringing bags (JPY5,150,140) by reducing 20% (not attributable to goodwill on Hermès bags) for JPY4,120,112, (ii) “mental suffering” caused by an infringement for JPY1,000,000, and (iii) reasonable attorney fee for JPY520,000.

To read a full text of the Tokyo District Court decision (Japanese only), click here.

JPO Decision: the Volkswagen Beetle 3D shape Lacks Distinctiveness

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The JPO Appeal Board affirmed the examiner’s rejection and decided to refuse IR no. 1379178 for the 3D shape of the Volkswagen Beetle due to a lack of inherent and acquired distinctiveness in relation to goods of classes 9, 28, and 30.

[Appeal case no. 2020-650030, Gazette issued date: January 27, 2023]

VW Beetle

German car giant Volkswagen AG filed a 3D mark representing the iconic VW Beetle car (see below) in relation to various goods including navigation apparatus for vehicles [onboard computers], toy automobiles, scale model automobiles of classes 9, 28, and 30 with the JPO via the Madrid Protocol on December 7, 2017.

The JPO examiner rejected the mark in contravention of Article 3(1)(iii) and 4(1)(xvi) of the Japan Trademark Law on March 19, 2020, by stating that the mark merely represents a common shape of goods when used on toy automobiles, scale model automobiles of class 28 and chocolate and desserts, ice creams, frozen yogurts and sorbets of class 30, and consumers will misunderstand the quality of goods when used on other designated goods.

Appeal by Volkswagen

Volkswagen filed an appeal against the rejection on July 2, 2020, and argued the inherent and acquired distinctiveness of the 3D mark as a result of substantial use on VW’s automobiles (cl. 12) for more than six decades and around 21.5 million units cumulatively.

JPO Decision

The Appeal Board at its discretion found plenty of goods in the shape of cars promoted for sale in relation to toy automobiles, scale model automobiles (cl. 28), and chocolate and desserts, frozen yogurts, and sorbets (cl. 30).

Bearing this fact in mind, the Board has a reason to believe the applied mark is adopted for a purpose of enhancing function or the aesthetic appeal of the goods in question. If so, the shape still remains within the scope of the descriptive shape of goods and shall be unregistrable due to a lack of inherent distinctiveness in relation to these goods.

Furthermore, the Board pointed out that Volkswagen stopped manufacturing cars in the shape of the applied mark in 2003. There is reasonable doubt that the 3D mark has been famous as a source indicator of VW cars after a lapse of twenty years. Besides, the applicant has not produced any evidence to demonstrate the actual use of the 3D shape on goods in classes 9, 28, and 30 and its sales.

Based on the foregoing, the Board found the 3D mark lacks inherent and acquired distinctiveness in relation to the goods in question and dismissed the appeal entirely.

IP High Court Rules Lego 3D Figure Mark Unregistrable

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The Japan IP High Court dismissed an appeal brought by Lego Juris A/S and affirmed the Japan Patent Office (JPO) decision that found the 3D shape of Lego figures unregistrable due to a lack of inherent distinctiveness and secondary meaning in relation to toys.

[Court case no. Reiwa4(Gyo-ke)10050, decision date: December 26, 2022]

LEGO 3D Figure Mark

Toy giant, Lego Juris A/S applied to register a 3D mark, showing the Lego figure seen from the front, side, back, top, and beneath (see below), for “games and playthings” and other goods in class 28 on October 20, 2017 (TM App no. 2017-138422).

JPO rejection

The JPO Appeal Board sustained the findings of the examiner and found the 3D mark does not go beyond the scope of the descriptive shape of the goods in question by stating that:

  1. Plenty of human shapes figures have been promoted for sale by competitors in the relevant business field.
  2. There is less necessity to adopt a specific configuration in making a human shape figure provided that it has a basic skeleton of head, body, arms, and legs.
  3. The Board has a reason to believe the 3D shape of the applied mark is adopted enabling (i) to wear several caps and hair wigs, (ii) to get hold of various tools at hand, and (iii) to stand still in the display, and play.
  4. If so, relevant consumers would assume the whole shape and its unique decoration of the Lego figure attributable to enhancing function or the aesthetic appeal of the toy.

Based on the foregoing, on January 6, 2022, the Board decided to dismiss the appeal in contravention of Article 3(1)(iii) of the Japan Trademark Law. See a previous post from here.

Lego Juris A/S immediately brought the case to the IP High Court and argued inherent distinctiveness and secondary meaning as a result of the substantial use of the 3D shape in relation to toys.

IP High Court ruling

By judgment of December 26, 2022, the IP High Court found relevant consumers are likely to consider the 3D shape as a whole adopted for a purpose of enhancing function or the aesthetic appeal of ‘human figure toys’ by taking into account a lot of human shape figures with similar features by competitors and trade practice.

The judge stated JPO did not error in applying Article 3(1)(iii) of the Japan Trademark Law and the 3D mark shall be unregistrable due to a lack of inherent distinctiveness under the article.

As for Lego’s allegations of the secondary meaning, the judge, based on the produced evidence, pointed out that relevant consumers would just consider the 3D mark as an unfinished shape of Lego figures because there is a number of figures wearing caps and hair wigs with different facial expressions.

In order to bolster secondary meaning, Lego produced an interview report, showing 37.32% of the interviewees (a total of 1,190 people aged over 16) selected “Lego” from a list. However, the judge thought it negatively by paying an attention to the fact that more interviewees (amounting to 37.45%) selected other brands from the list.

Accordingly, the court decided the 3D mark is even unregistrable under Article 3(2) because it has yet to acquire secondary meaning as a source indicator of Lego figures.

Marks IP Wins Trademark Dispute to Register 3D Shape of Hard Rock Guitar Hotel

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On August 8, the Appeal Board of the Japan Patent Office (JPO) disaffirmed the examiner’s rejection and decided to grant protection of IR no. 1440057 for a 3D guitar-shaped mark in relation to a casino game, hotel, restaurant, and bar services.

[Appeal case no. 2021-650016]

IR no. 1440057

Seminole Tribe of Florida (STF) filed a 3D guitar-shaped mark (see below) for use in providing casino game services (cl. 41) and hotel, restaurant, and bar services (cl.43) with the JPO via the Madrid Protocol on October 23, 2018.

The 3D mark represents the iconic Guitar Hotel at Seminole Hard Rock Hotel & Casino Hollywood in Florida, USA, newly opened in October 2019.

The JPO examiner rejected the 3D mark based on Article 3(1)(vi) of the Trademark Law due to a lack of distinctiveness in relation to the services of classes 41 and 43. The examiner asserted that the mark consists of a three-dimensional shape recognized as a building in the shape of a guitar as specified by the applicant in the description of the mark stating “The mark consists of a building in the shape of a guitar”. Given there are buildings in the shape of a musical instrument (see below), and the designated services are generally provided in stores or buildings, relevant consumers would consider that the 3D mark simply represents a form of a store or building to provide hotel restaurants, bars, and casino when used on the services in question, not a source indicator.

Appeal

Marks IP, on behalf of STF, filed an appeal against the rejection and argued the inherent distinctiveness of the 3D mark in relation to the designated services because a guitar shape would never directly suggest or imply the specific quality of a casino, hotel, restaurant, and bar services.

In the course of appeal proceedings, the JPO notified a provisional opinion to affirm the examiner’s rejection by stating:

“In general, the shape of a store to provide services is adopted for the purpose of enhancing functionality and aesthetics. In fact, there are many stores or buildings that have a distinctive and unique appearance as shown below.

If so, it is reasonable to conclude that the 3D mark in question remains within the scope of shape just to enhance the aesthetic or attractive effect to the store from appearance, and that relevant consumer would not recognize the mark as a source indicator.”

In response, Mark IP argued the cited stores and buildings are no facilities for a casino, hotel, restaurant, and bar services. In addition, the shape of these facilities per se plays a role in source indicator by virtue of its eccentric design that is sufficiently distinguishable from other buildings. As a matter of fact, consumers have already recognized them as a landmark in the region and connected their shape with the name and business of the respective facilities. In the event that a three-dimensional shape is not foreseeable to consumers in relation to goods and services, it should be considered inherently distinctive.

JPO decision

The Appeal Board eventually decided to reverse the examiner’s rejection by stating:

“Even if the 3D mark can be recognized as a guitar-shaped building, it is difficult to consider that the 3D mark represents a form of a store or building to provide a hotel or restaurant when used on the services in question. Therefore, even if the 3D mark is used in connection with the designated services, consumers will be able to recognize the mark as a source indicator of the services by a certain business entity. If so, the Board has reason to believe the examiner errored in finding distinctiveness of the 3D mark and applying Article 3(1)(vi).”

Based on the foregoing, the Board concluded the 3D mark shall not be rejected under Article 3(1)(vi) of the Trademark Law and decided in favor of Hard Rock!

JPO Found Lego 3D Figure Mark Lack Distinctiveness

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In a decision to the appeal against refusal to TM App no. 2017-138422 for the 3D shape of Lego figures in class 28, the Japan Patent Office (JPO) did not side with Lego Juris A/S and found the 3D mark is inherently descriptive and has not acquired distinctiveness in relation to toys.

[Appeal case no. 2019-13906, Decision date: January 6, 2022]

LEGO 3D Figure mark

Toy giant, Lego Juris A/S applied to the JPO to register a 3D mark, showing the Lego figure seen from the front, side, back, top, and beneath (see below), for “games and playthings” and other goods in class 28 on October 20, 2017.

Article 3(1)(iii)

Trademark Examination Guideline (TEG) pertinent to Article 3(1)(iii) of the Japan Trademark Law provides a mark shall be subject to the article if it solely consists of a shape that is recognized by consumers as a shape of goods or equivalent, namely “not go beyond the scope of the descriptive shape of goods”.

TEG stipulates criteria to assess the recognition.

  1. Where 3D shape is admittedly adopted for a purpose of enhancing function or the aesthetic appeal of goods, the shape is deemed to remain within the scope of descriptive shape of goods.
  2. Even though 3D shape has specific features by means of unique alteration or decoration, it is still considered not to go beyond the scope of descriptive shape of goods, where consumers assume such alteration or decoration attributable to enhancing function or the aesthetic appeal of goods.

The JPO examiner totally rejected the applied mark based on the article by finding the shape remains the scope of the descriptive shape of ‘human figure toys’ in class 28.

Lego Juris A/S filed an appeal against the rejection on October 18, 2019.

JPO decision

The JPO Appeal Board affirmed the findings of the examiner and found the 3D mark does not go beyond the scope of the descriptive shape of the goods in question by stating that:

  1. Plenty of human shape figures have been promoted for sale by competitors in relevant business field.
  2. There is less necessity to adopt specific configuration in making a human shape figure provided that it has a basic skeleton of head, body, arms, and legs.
  3. The Board has a reason to believe 3D shape of the applied mark is adopted enabling (i) to wear several caps and hair wigs, (ii) to get hold of various tools at hand, (iii) to stand still in display and play.
  4. If so, relevant consumers would assume the whole shape and its unique decoration of Lego figure attributable to enhancing function or the aesthetic appeal of the toy.

Taking into consideration that the actual 3D shape of Lego figures are considerably different from the applied mark, and the word mark “LEGO” has been constantly used on catalogs, packages, and advertisement material adjacent to the applied mark, the Board has a reasonable doubt if the 3D shape per se has acquired distinctiveness as a source indicator of LEGO toys.

Based on the foregoing, the JPO Appeal Board decided to dismiss the appeal in contravention of Article 3(1)(iii).