カテゴリー: Trademark Appeal

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).

“Uber Finish” Causes No likelihood of confusion with “Uber”?

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In an appeal trial against the examiner’s refusal to TM App no. 2023-19561 for word mark “Uber Finish”, the Japan Patent Office (JPO) decided to reverse the refusal by finding unlikelihood of confusion with trademark “Uber”.
[Appeal case no. 2024-4656, decided on September 3, 2024]

Uber Finish

A Japanese individual filed a trademark application for wordmark “Uber Finish” in standard character for use on adult dating services and others of class 45 in the field of adult entertainment business with the JPO on February 24, 2023.

Uber

On January 4, 2024, the JPO examiner rejected the mark on following grounds.

Article 4(1)(viii)

The examiner pointed out that the applied mark “Uber Finish” contains the term “Uber” that is identical with a famous abbreviation of the global company Uber Technologies Inc.
Provided that the applicant has not obtained an approval to register the applied mark in Japan from the company, it is not registrable under Article 4(1)(viii) of the Trademark Law.

Article 4(1)(xv)

Unquestionably, the term “Uber” is identical with a famous mark “Uber” that has been used by the global company Uber Technologies Inc. on ride-sharing services and food delivery services prior to the filing of the applied mark. Accordingly, it is not registrable under Article 4(1)(xv) of the Trademark Law because relevant consumers of the service in question are likely to confusion a source of the services bearing the applied mark “Uber Finish” with Uber Technologies or other business entity systematically or economically connected with Uber.

The applicant filed an appeal against the refusal on March 18, 2024 and argued registrability of the applied mark.

JPO decision

To my surprise, the JPO Appeal Board denied famousness of the mark “Uber” as an abbreviation of Uber Technologies Inc., even though they admitted the company has operated ride-hailing and food delivery services in the name of “Uber Taxi” and “Uber Eats”.

Based on the above finding, the Board found the applied mark does not contain a famous abbreviation of the company name, Uber Technologies Inc. Therefore, the examiner erroneously applied Article 4(1)(viii) to the case.

The Board found the mark “Uber Finish” and “Uber” dissimilar by stating that:

“From appearance, the marks share the word “Uber” at the beginning of the word, but the difference in the word “Finish” that follows makes them different words as a whole, and therefore, it is easy to distinguish them.
Although the four sounds of “Uber” at the beginning of the word may be common, the difference in the sound of “Finish” at the end of the word makes the overall tone and impression different, so it is easy to distinguish two marks.
A conceptual comparison is neutral as neither “Uber Finish” not “Uber” have any clear meaning.
Taking a global account of visual and aural distinctions, average consumers would consider them as different trademarks to indicate a different source respectively.”

Besides, the business managed by Under Technologies Inc. is remotely associated with the services in question, namely, adult entertainment services. If so, relevant consumers with an ordinary care are unlikely to confuse a source of services bearing the applied mark with Uber Technologies Inc. In this respect, the examiner made an error in applying Article 4(1)(xv).

Consequently, the Board decided to overturn the examiner’s refusal and grant registration of the applied mark.

JPO found “Arounds” dissimilar to “AROUND” as trademark

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The Japan Patent Office (JPO) reversed examiner’s rejection to TM App no. 2023-100274 “Arounds” in classes 9, 35, 41 and 42 by finding dissimilarity of mark to earlier IR no. 873694 “AROUND” in class 9.
[Appeal case no. 2024-7308, decided on August 13, 2024]

Arounds

Funny Side Up, Inc. filed a trademark application for wordmark “Arounds” in standard character for use on goods in class 9 and services in classes 35, 41, and 42 with the JPO on September 7, 2023.

The applicant uses the mark to indicate an online platform for a lifestyle exchange community.

AROUND

On February 14, 2024, the JPO examiner rejected the mark “Arounds” in contravention of Article 4(1)(xi) of the Japan Trademark Law due to a conflict with earlier IR no. 873694 for wordmark “AROUND” in class 9.

Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.

The applicant filed an appeal against the rejection with the JPO on April 30, 2024 and argued dissimilarity of mark between “Arounds” and “AROUND”.

JPO decision

The JPO Appeal Board found the examiner errored in finding similarity of mark and decided to reverse the rejection.

  • Assessment of the applied mark

The term “Arounds” is neither present in dictionaries nor immediately recognizable as a specific word. Therefore, the mark “Arounds” just has a sound of “Arounds”, but not any specific meaning from its component letters.

  • Assessment of the earlier mark

It is obvious that the average consumers will recognize the cited mark, comprised of the English word “AROUND”, has a sound of “AROUND” and a meaning of ‘positioned or moving in or near a place’ from its constituent letters.

  • Comparison of two marks

From appearance, two marks share the same term “Around” at the beginning. However, the term “AROUND”, a commonly known English word among consumers, has been rarely represented or used in the plural form. If so, the Board has a reason to believe that, on account of the presence of a letter “s” at the end of the applied mark, relevant consumers will consider two marks represent different words and thus it is possible for the consumers to visually distinguish them.

Because of aural difference in the bottom sound of “z” or “d”, it causes a discernible distinction in the overall tone and nuance so that the consumers can distinguish the sound of two marks.

Regarding conceptual comparison, the cited mark gives rise to a clear meaning, whereas the applied mark does not have any specific meaning. Therefore, there is no risk of confusion from a conceptual point of view.

Given relevant consumers can distinguish both marks from appearance and sound, and there is no likelihood of confusion in concept, the Board has a reason to believe that the applied mark “Arounds” is dissimilar to the cited mark “AROUNDS” even if when used on the same or similar goods in class 9.

  • Conclusion

Based on the foregoing, the Board decided to overturn the examiner’s rejection and granted registration of the applied mark.

Trademark dispute: “Ⓗ REWARDS” vs “REWARDS”

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In a recent decision, the Japan Patent Office (JPO) found that a junior mark consisting of Circled “H” and a word “REWARDS” is dissimilar to earlier trademark “REWARDS” and decided to overturn the examiner’s refusal.
[Appeal case no. 2024-1366, decided on August 6, 2024]

Applied mark

H WORLD HOLDINGS SINGAPORE PTE. LTD. filed a trademark application with the JPO on August 2, 2022. for a mark consisting of a circled “H” device and the word “REWARDS” (see below) in connection with various services of Classes 35 and 43.

Cited mark

On December 5, 2023, the JPO examiner decided to reject the applied mark due to a conflict with earlier TM Reg no. 5017950 for wordmark “REWARDS” in standard character for use on various services in classes 35 and 39 based on Article 4(1)(xi) of the Japan Trademark Law.

Article 4(1)(xi) is a provision to prohibit registration of a junior mark that is identical with, or similar to, any senior registered mark.

The applicant filed an appeal against the rejection with the JPO on January 25, 2024.

JPO decision

Astonishingly, the JPO Appeal Board found the applied mark is dissimilar to the cited mark by stating that:

The applied mark is composed of the alphabet “H” in circle and a word “REWARDS”. Despite the slight separation between “H” and “REWARDS”, as these letters are represented in the same typeface and alphabets in a horizontal line, it rather gives a coherent impression in appearance.

 Although the word “REWARDS” is an English word denoting the plural form of “REWARD,” in a coherent composition like the applied mark, the applied mark will be simply recognized as representing a coined word consisting of the words “H REWARDS.”

If so, the applied mark would give rise to a sound of ‘H REWARDS’, but no specific meaning as a whole.

Comparing the applied mark with the cited mark, regardless of the fact that both marks share the word “REWARDS,” two marks are visually distinguishable by virtue of the presence or absence of the circled letter “H”.

Likewise, both marks are distinguishable in sound because of the presence or absence of the initial component sound that remarkably alters the overall tone and nuance.

From a conceptual point of view, the applied mark does not give rise to a specific meaning, whereas the cited mark has a meaning of “ something given in exchange for good behavior or good work, etc.” There is no room to find conceptual similarity between the marks.

Based on the above findings, the Board noted that the applied mark is sufficiently distinguishable from the cited mark and unlikely to cause confusion with the cited mark when used in relation to the services in question.

Therefore, even though the services sought for registration by the applied mark are deemed similar to the service designated under the cited mark, given the applied mark is dissimilar to the cited mark, it is inappropriate to apply Article 4(1)(xi) of the Trademark Law.

Accordingly, the Board decided to overturn the examiner’s rejection and granted protection of the applied mark.

Cobra Golf Scores Win in an Attempt to Register Mark “MIM”

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In a recent decision, the Japan Patent Office (JPO) Appeal Board sided with Cobra Golf Incorporated, represented by MARKS IP LAW FIRM, and disaffirmed the examiner’s rejection by finding dissimilarity between TM Reg no. 6208087 and Cobra’s mark “MIM” for use on golf clubs.
[Appeal case nos. 2023-16540, decided on July 9, 2024]

Cobra Golf “MIM”

Cobra Golf Incorporated, one of the leasing US golf club and golf equipment manufacturer, applied for registration of wordmark “MIM” in standard character with the JPO on December 7, 2020 for use on golf clubs in class 28 (TM App no. 2020-151063).

Cobra Golf uses the mark on their golf irons produced with a new innovative “MIM” technology which stands for ‘Metal Injection Molding’.

The JPO examiner rejected the mark in contravention of Article 4(1)(xi) of the Trademark Law due to a conflict with an earlier trademark registration no. 6208087 for a composite mark consisting of the word “MIZKAN MUSEUM” with a device that can be seen as the word “MIM” (see below) in class 21 on June 30, 2023.

Marks IP Law Firm, on behalf of Cobra Golf, filed an appeal with the JPO on September 29, 2023, arguing that the cited mark is dissimilar to the word mark “MIM” because the figurative element of the cited mark would not be considered as a word “MIM” due to its stylization, but rather as a design consisting of a vertical line in between two “M” letters representing an initial letter of “MIZKAN” and “MUSEUM” respectively.

JPO decision

The JPO Appeal Board found that the cited mark would not give rise to a pronunciation of “MIM” from the figurative element by stating that:

There is a slight possibility that the building-like figures on the left and right sides of the upper part of the cited mark will be perceived as the letter “M” from appearance. However, the Board considers that the relevant consumers are unlikely to find so because of the considerable stylization. The vertical line between the letters, combined with the fact that it is of a shorter length than the letters, will also not be identified as the letter “I.”

It is therefore reasonable to conclude that the upper part of the cited mark would never be immediately recognized as representing the word “MIM” as a whole. Rather, the relevant consumers would recognize it only as a representation of a design with no specific meaning in its entirety.

Given the upper part of the cited mark has neither sound nor meaning, both marks, when considered globally, are easily distinguishable from visual, phonetical and conceptual points of view and unlikely to cause confusion when used on goods in class 28.

Based on the foregoing, the Board held that the examiner errored in applying Article 4(1)(xi) and decided to grant registration of Cobra’s mark “MIM”.

Trademark battle: FORTNITE vs FORTNIGHT

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In an invalidation trial against TM Reg no. 6389929 for word mark “FORTNIGHT” in classes 9, 16, 28, 35, 41 and 43, the Japan Patent Office (JPO) did not rule in favor of Epic Games, Inc. due to an unlikelihood of confusion with “FORTNITE”.
[Invalidation case no. 2023-890068, decided on May 9, 2024]

FORTNIGHT

A Japanese company sought registration of word mark “FORTNIGHT” in standard character for use on various goods and services in classes 9, 16, 28, 35, 41 and 43 (including games) with the JPO on June 4, 2018 (TM App no. 2028-79647).

The JPO examiner rejected the mark due to a likelihood of confusion with famous game software and distribution platform “FORTNITE” managed by Epic Games, Inc.

However, the JPO Appeal Board disaffirmed the rejection by stating that there is no reason to find “FORTNITE” has been widely recognized among relevant consumers to indicate Epic business and the applicant deleted games from designation. If so, it is unlikely that relevant consumers would not confuse the source of goods and service bearing “FORTNIGHT” with Epic’s “FORTNITE”.

The mark “FORTNIGHT” was registered on June 8, 2021.

Invalidation action by Epic Games, Inc.

Epic Games, Inc. is an American video game development and distribution company, widely known for the success of “Fortnite”, a free multiplayer online video game first released in 2017, and its game marketplace. On August 10, 2021, Epic filed a post-grant opposition against TM Reg no. 6389929 “FORTNIGHT” on August 10, 2021, but the opposition was unsuccessful (Opposition case no. 2021-900304).

On August 22, 2023, Epic filed an invalidation action and claimed that the mark “FORTNIGHT” should be invalidated in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law.

Epic repeatedly argued “FORTNIGHT” has a high degree of similarity to “FORTNITE” from visual, phonetical and conceptual points of view. Taking account of famous online game “FORTNITE” among game users and close relation between online games and the goods and services in question, relevant consumers are likely to confuse “FORTNIGHT” with “FORTNITE”.

Given that the initial filing designated the game in question, it is presumed that the company had knowledge of the well-known online game software “FORTNITE” and aimed to benefit from its reputation.

JPO decision

The JPO Invalidation Board found that “FORTNITE” has been widely recognized to indicate video games of Epic among consumers and traders in video game industry. However, given that the launch of the video games in Japan precedes the application date of the mark “FORTNIGHT” by three months, such recognition would be limited to the industry.

With regard to the similarity of the marks, the Board stated, “Although “FORTNIGHT” and “FORTNITE” share the same sound, they are distinguishable in appearance, and the concepts are not comparable. In assessing the overall impression, the Board has a reason to find a low degree of similarity between the marks.”

In light of the aforementioned findings, the Board determined that relevant consumers are unlikely to confuse the source of the goods and services in question bearing the mark “FORTNIGHT” with “FORTNITE.”

Furthermore, there is no evidence to suggest that the applicant had any malicious intention of free-riding on or damaging Epic’s online video games “FORTNITE.”

Consequently, the Board dismissed the invalidation action and declared the validity of TM Reg. No. 6389929.

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).

Trademark dispute: “SOFTWEAR” vs “SOFTWAIR”

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In an appeal trial disputing similarity between wordmark “SOFTWEAR” and “SOFTWAIR”, the JPO reversed the examiner’s rejection due to the error in finding dissimilarity of two marks.
[Appeal case no. 2023-20831, decided on April 24. 2024]

SOFTWEAR

DuPont Safety & Construction, Inc., a US corporation, sought registration of wordmark “SAFTWEAR” in standard character for use on blankets, gloves, masks, protection masks, protective suits for medical use in class 10 with the JPO on August 22, 2022.

SOFTWAIR

The JPO examiner rejected the applied mark due to a conflict with TM Reg no. 6719284 for wordmark “SOFTWAIR” in standard character owned by Air Wair International Ltd based on Article 4(1)(xi) of the Japan Trademark Law.

The earlier mark covers not only shoes, sports shoes, but also clothing in class 25.

DuPont filed an appeal against the examiner’s rejection on December 7, 2023 and argued that the examiner had errored in assessing similarity between the mark “SOFTWEAR” and “SOFTWAIR”.

JPO decision

The JPO Appeal Board found the applied mark “SOFTWEAR” is not a word included in common dictionaries. Even tough respective term “SOFT” and “WEAR” has its meaning, there is no reason to believe the mark give rise to any specific meaning as a whole.

Likewise, the cited mark “SOFTWAIR” would not have a specific meaning in its entirety. But it should note that the Board found the cited mark has three pronunciations, ‘sɔft weər’, ‘sɔft waɪr ’ and  ‘sɔft ueia’.

From appearance, in spite that they consist of the same kind (alphabet) and number of characters, two marks are clearly distinguishable, because of the difference of two characters “EA” and “AI” in the middle of the eight-character composition.

Even if two marks have the same pronunciation of ‘sɔft weər’, when compared with ‘sɔft waɪr ’ and  ‘sɔft ueia’, the difference in the middle of the entire five or six sounds would result in a clear distinction in the overall tone and feeling.

Conceptually, it is unable to compare since both marks do not give rise to a specific meaning at all.

Based on the above findings, the Board held that even if the applied mark has the same pronunciation with one of the sounds of the cited mark, other two sounds are sufficiently distinguishable to the sound of the applied mark. Besides, both marks are not comparable in conception, and clearly distinguishable in appearance. When taking into consideration the impressions and memories given in mind of consumers by two marks, there is no risk of confusion as to the origin of the goods, and thus the Board has a reason to believe “SOFTWEAR” is dissimilar to “SOFTWAIR”.

Therefore, the examiner errored in finding similarity of the marks and applying Article 4(1)(xi). Accordingly, the rejection shall be overturned.

IP High Court Rejected TM Registration of AP “ROYAL OAK” Watch Design

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On March 28, 2024, the Japan IP High Court decided to dismiss the appeal filed by Audemars Piguet Holding SA, a Swiss luxury watchmaker, against the JPO’s decision (Appeal No. 2021-013234) to reject TM Application No. 2020-20319 for the device mark representing AP’s iconic “ROYAL OAK” watch collection for lack of both inherent and acquired distinctiveness.
[Court case no. Reiwa5(Gyo-ke)10119]

Audemars Piguet “ROYAL OAK” Watch Collection

On February 26, 2020, Audemars Piguet Holding SA (AP) filed a trademark application for the shape of the flagship watch collection “ROYAL OAK” (see below) to be used on ‘watches’ in class 14 with the Japan Patent Office (JPO) [TM application no. 2020-20319].

The mark consists of a dial with tapisserie pattern and hour markers, minute track, date window, an octagonal bezel with 8 hexagonal screws, case, a crown, and a lug of the famed “ROYAL OAK” watch collections.

JPO Refusal

On June 8, 2023, the JPO Appeal Board affirmed the examiner’s rejection and decided to refuse registration of the applied mark due to a lack of inherent distinctiveness based on Articles 3(1)(iii) of the Japan Trademark Law by stating that relevant consumers would simply recognize it as a generic shape of a wristwatch, not a specific source indication since many watchmakers have supplied with similar shape to the dial, bezel, case, crown, and lug of the applied mark (see below examples).

Besides, the Board found the produced evidence is insufficient to determine whether the shape per se has acquired nationwide recognition as a source indicator of AP’s watches.

Audemars Piguet Holding SA filed a lawsuit with the Japan IP High Court on October 20, 2023, and disputed inherent and acquired distinctiveness of the applied mark.

IP High Court ruling

  • Inherent distinctiveness: Article 3(1)(iii)

In the decision, the judge said “There is no particular circumstance in which the shape represented by the applied mark is taken novel in comparison with the shapes of other wristwatches. If so, it is considered within the range of shapes normally required to achieve basic function of the goods. Even supposing that the shape is unique as a whole, the shape of each component is made in a form suitable for use as a wristwatch, and selected from the viewpoint to achieve the function of the goods. Therefore, the applied mark lacks distinctiveness since it remains within the scope of expected selection of the shape for functional reasons of a wristwatch.”

AP claimed the JPO finding is inadequate because none of competitors watches have the same combination of three unique features, namely, (i) an octagonal bezel, (ii) 8 hexagonal screws, and (iii) tapisserie pattern on the surface of a dial. Visual similarity in one or two components are insufficient to deny inherent distinctiveness of the applied mark.

However, the court did not agree with this allegation and said “It is sufficient to assess whether each shape of components is distinctive as part of the shape of wristwatch”.

  • Acquired distinctiveness: Article 3(2)

AP argued acquired distinctiveness of the applied mark as a result of substantial use since 1972. Allegedly, annual sales of the “ROYAL OAK” luxury watches exceed JPY 8 billion on average in the past six years. Each year, AP spent more than JPY400 million on advertisement and promotion in Japan.

In this respect, the court pointed out the “ROYAL OAK” watches have some collections that do not represent three unique features, such as, “Royal Oak Offshore” and “Royal Oak Concept” (see below). If so, the annual sales and expenditures on advertisement and promotion would not all attribute to watches representing the applied mark.

Besides, AP has not produced the result of market research to demonstrate a certain degree of recognition of the applied mark. Accordingly, the court has no reason to believe the applied mark per se has played a role in identifying the source of famous luxury watch, Audemas Piguet.

Based on the foregoing, the court determined that the JPO did not err in its findings and that the application of Article 3(1)(iii) and 3(2) was appropriate. As a result, the court decided to dismiss the appeal in its entirely.

Japan IP High Court said No to registering the color of Hermes packaging.

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The Japan IP High Court ruled to dismiss Herme’s appeal against the JPO decision that rejected Hermes packaging color due to a lack of inherent and acquired distinctiveness.
[Court case no. Reiwa5 (Gyo-ke) 10095, ruled on March 11, 2024]

Color mark of Hermes box

On August 23, 2023, HERMES INTERNARTIONAL filed an appeal with the Japan IP High Court to seek the cancellation of the JPO refusal decision (Appeal case no. 2021-13743) that denied registration of TM App no. 2018-133223 for a color mark consisting of orange on the entire box and brown on the upper outline of the box. (see below)

The application designates various goods in classes 3, 14, 16, 18, and retail services for the goods in class 35.

Second Market Research

HERMES conducted a second market research study in August 2023 to demonstrate acquired distinctiveness of its packaging color. The study targeted men and women in their 30s to 50s residing in nine prefectures who expressed interest in bags, accessories, watches, cosmetics, or perfume and had purchased either of these items within the past six months.

According to the second research report, 39.2% of respondents (2,060 in total) answered Hermes when shown three Hermes boxes in different shapes. 44.4% chose Hermes from the ten options (It is notable that 27.2% of respondents selected “Louis Vuitton” as their answer).

IP High Court decision

In their ruling, the judges pointed out the applied mark is classified into a mark consisting of colors, but from descriptions of mark, it is considered a two-color mark combined with a three-dimensional shape (a box).

The judges also noted the submitted evidence did not demonstrate the actual use of the applied mark in relation to perfumery of class 3 and paper boxes, paper bags, paper packages and wrapping papers of class 16, nor did it substantiate the use of the mark in relation to retail services for these goods in class 35.

The judge recognized that the “Hermes” brand has gained significant recognition in Japan, and its degree of renown is considered to be one of the most prominent among all fashion brands. From the submitted advertisement and publications, the applied mark evidently has been used as a symbolic color to indicate “Hermes” in a marketing tactic designed to enhance brand value. It is clear that the Hermes box is a well-known and important identifier for consumers interested in or who have purchased luxury fashion items.

The issue is whether relevant consumers can identify Hermes from the colors per se on Hermes box, without the word “Hermes” and the horse and carriage emblem. In this respect, the court said it useful to review brand recognition research especially in a case for color mark. The judges said the result of two market researches are sufficient (Recognition rate: approximately 40%) to admit acquired distinctiveness in general. However, two researches do not target general consumers by excluding age under 29 and over 60, and limiting their incomes JPY10,000,000 and above (1st research) or those who expressed interest in bags, accessories, watches, cosmetics, or perfume and had purchased either of these items within the past six months (2nd research).

Given the applied mark covers various goods that are regularly consumed by the general public, the researches with such limitations are inadequate and insufficient as evidence to demonstrate acquired distinctiveness of the color mark in question.

Therefore, the court has a reason to believe the JPO did not make an error in denying inherent and acquired distinctiveness of the applied mark and rejecting it based on Article 3(1)(iii) and 3(2) of the Trademark Law.

Based on the foregoing, the court decided to dismiss the entire appeal by Hermes.