タグ: Article 3(1)(iii)

JPO Grants TM Registration for 3D Shape of the Popular Pocky Cookie

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On July 25, 2025, the Japan Patent Office (JPO) granted trademark registration for the three-dimensional (3D) shape of Ezaki Glico’s iconic “Pocky” cookie, recognizing that the shape had acquired distinctiveness in relation to chocolate confections in Class 30 [TM Reg. No. 6951539].

Ezaki Glico’s Pocky

Pocky, first introduced in 1966 by Ezaki Glico—one of Japan’s leading confectionery manufacturers—is a slender biscuit stick coated in chocolate, with the lower end intentionally left bare to allow for easy handling without getting chocolate on the fingers.

On March 13, 2024, MARKS IP LAW FIRM, acting as trademark counsel to Ezaki Glico, filed a 3D trademark application with the JPO for the shape of the Pocky cookie, covering confectionery in Class 30 [TM App. No. 2024-26132].

Acquired Distinctiveness

During the substantive examination, as anticipated, the JPO issued a Notification of Reasons for Refusal pursuant to Article 3(1)(iii) of the Japan Trademark Law. This provision bars registration of marks that consist solely of indications commonly used to designate, inter alia, the place of origin, quality, raw materials, intended purpose, shape (including packaging), price, or method/time of production or use.

In response, we submitted that the Pocky cookie’s 3D shape had, through long-standing and widespread use, come to function as a source identifier. Accordingly, it should qualify for exception under Article 3(2) of the Japan Trademark Law, which permits registration of marks otherwise barred under Article 3(1)(iii)–(v), provided that the mark has acquired distinctiveness among relevant consumers.

To substantiate the claim of acquired distinctiveness, we submitted extensive evidence, including market research targeting 1,036 men and women aged 16 to 79. Remarkably, 91.6% of respondents, when shown the 3D shape of the Pocky cookie without any accompanying text, identified it as “Pocky” or “Pocky chocolate” in response to an open-ended question.

JPO Decision

Following the submission of evidence and subsequent restriction of the designated goods to “chocolate confections” in Class 30, the JPO approved the registration on June 24, 2025 by admitting acquired distinctiveness of the 3D mark.

To date, the JPO has granted a total of eight registrations for the 3D shape of confectionery products. Of these, only two—prior to Pocky—were registered on the basis of acquired distinctiveness under Article 3(2). The Pocky case therefore represents only the third such registration in Japan and is particularly noteworthy given the simplicity and lack of ornamentation in the claimed product shape.

JPO Said No to Register Kawasaki Green Color Mark

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On March 19, 2025, the Japan Patent Office (JPO) finally decided to reject a color mark application filed a decade ago by Kawasaki Heavy Industries, Ltd., which sought to register a green color used on the world-famous Kawasaki motorcycles.
[Appeal case no. 2022-11189]

Narrow gate to color mark registration

On April 1, 2015, the Japan Trademark Law has opened the door to the registration of marks consisting solely of a color or colors. To date, 589 color marks have been filed with the JPO, and only 11 have been granted registration. This represents a success rate of only 1.9%.

Kawasaki Green

On the very first day, Kawasaki Heavy Industries, Ltd., famous for sports and racing bikes, sought for registration of a color mark consisting solely of light green (R105, G190, B40) in connection with motorcycles (cl.12). [TM App no. 2015-30667]

In addition, Kawasaki filed two color mark applications for a single light green color represented on fuel tank (position) and a color combination of light green and black as shown below for use on motorcycles (cl. 12) with the JPO on the same day, but these were all withdrawn or rejected due to a lack of inherent and acquired distinctiveness. [TM App nos. 2015-30668, 2015-30696]

Allegedly, Kawasaki has been using the light green color on their Ninja, KX, KLX and other motorcycles since 1975, but, according to the catalogs, the color was used on less than 40 % of the total Kawasaki motorcycles. Besides, annual sales of the motorcycles using the light green color averaged approximately 23.4%.

On April 19, 2022, the JPO examiner rejected the color mark based on Article 3(1)(iii) of the Japan Trademark Law.

Kawasaki filed an appeal against the rejection and agued acquired distinctiveness of the light green in connection to motorcycles on July 19, 2022.

In order to demonstrate the acquired distinctiveness of the light color as a source indicator of Kawasaki motorcycles, Kawasaki conducted the market research that targeted a total of 1,000 men and women aged from 16 to 79 who has a motorcycle driver’s license, 90.5% of the interviewees who answered that they had seen the color in connection with motorcycles or motorcycle shops (66.1% of the total interviewees) could associate the color with Kawasaki.

JPO decision

The JPO Appeal Board noted the light green has acquired a certain degree of recognition among relevant consumers as a source indicator of Kawasaki motorcycles in view of substantial use for the past five decades.

However, the Board found that the market research was insufficient to objectively assess the acquired distinctiveness of the applied mark, as it was only targeted at motorcycle license holders. Moreover, competitors also manufacture many motorcycles with a similar green color.

According to the IP High Court’s decision, a mark consisting of a single color is not registrable unless it has acquired an extremely high degree of recognition as an indication of a particular source as a result of substantial use, to the extent that the exclusive use of the color would not cause detriment to the public in general.

In light of the fact that the light green color was used on less than 40 % of Kawasaki’s motorcycles, and the annual sales of the motorcycles using the light green color averaged approximately 23.4%, the Board has no reason to believe that the applied color has acquired a high degree of secondary meaning to outweigh the detrimental effect on the public at large if registered.

Based on the foregoing, the Board affirmed the examiner’s rejection and decided to refuse the applied mark based on Article 3(1)(iii) of the Japan Trademark Law.

It is appealable to the IP High Court until May 8, 2025.

No Green Light to Kawasaki Green Color Mark

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On November 15, 2024, Kawasaki Heavy Industries, Ltd. dropped their nine-year fight with the Japan Patent Office (JPO) over a green color mark used on the Kawasaki motorcycles.

Narrow gate to color mark registration

On April 1, 2015, the JPO commenced registration of marks consisting solely of a color or colors. To date, 585 color marks have been filed with the JPO, and only 11 have been granted registration. This equates to a success rate of just 1.9%.

Kawasaki Green

On the very first day, Kawasaki Heavy Industries, Ltd., famous for sports and racing bikes in Japan, filed an application for a color mark consisting of light green (R105, G190, B40) represented on fuel tank as shown below in connection with motorcycles (cl.12).

[TM App no. 2015-30696]

JPO decision

As anticipated, the JPO examiner rejected the mark due to a lack of inherent and acquired distinctiveness on April 18, 2022 based on Article 3(1)(iii) of the Japan Trademark Law in seven years after the initial filing.

In the refusal decision, the examiner found from the produced evidence that Kawasaki has used the applied color on fuel tank of motorcycles since 1998, however, more than 70% of the Kawasaki motorcycles in average have a fuel tank painted in other color.

The results of the interview, which targeted men and women aged 16 to 79 who own motorcycles or a license to drive one, indicate that 54.7% of license holders and 67.5% of bike owners were able to recognize Kawasaki from the color. In this respect, the examiner had a view that the results were not persuasive to find acquired distinctiveness of the applied mark given Honda, Yamaha, Suzuki, and Kawasaki, the four major motorcycle manufacturers, have held a near monopoly of the market for years, and each manufacturer is known to have its own distinctive color.

Accordingly, the examiner held the applied mark shall not be registrable under Article 3(2) of the Japan Trademark Law.

Kawasaki filed an appeal against the examiner’s rejection on July 19, 2022 and argued acquired distinctiveness of the color “green” to indicate a source of the Kawasaki motorcycles. After two years of dispute with the JPO Appeal Board, Kawasaki voluntarily withdrew the appeal on November 15, 2024.

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).

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).

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.

JPO rejection to Kubota Tractors’ Color Marks

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On October 31, 2023, the Japan Patent Office (JPO) rejected color marks for use on farm tractors by KUBOTA Corporation due to a lack of inherent and acquired distinctiveness in relation to farm tractors in class 12.

Kubota farm tractors

KUBOTA Corporation, established in 1890, a Japanese company manufacturing a wide range of agricultural machines, launched its farm tractors in 1960. According to the allegations, KUBOTA has used an orange color and black-and-orange colors on its farm tractors since 1980. In recent years, the tractors have occupied top market share of around 50% in Japan.

https://www.kubota.com/products/tractor/index.html

On December 26, 2018, KUBOTA applied for registration of color marks (see below) consisting of an orange color and color combinations (orange and black / orange, black and white) with the JPO in relation to farm tractors of class 12.

JPO rejection

The JPO examiner rejected the applications based on Article 3(1)(iii) of the Japan Trademark Law and found every color mark does not satisfy requirements of Article 3(2) by stating that:

  1. Farm tractors with similar color have been distributed by several competitors. Orange color has been commonly used on other agricultural machinery. Under the circumstances, there is no distinctive character to apply and use the applied color(s) on body, front grill, wheels of farm tractors. If so, the color marks are deemed descriptive in relation to the designated goods and shall be rejected based on Article 3(1)(iii).
  2. The market research that targeted 589 consumers resulted in approx. 30% of the interviewees answering “KUBOTA”. The result is insufficient to admit the color(s) per se has acquired distinctiveness as a source indicator because more than 30% associated the mark with other competitors in spite that Kubota’s tractors have occupied top market share for long years.
  3. In view of the fact that orange corresponds to one of safety colors determined by the Japan Industrial Standards (JIS), there is a high demand to freely use the color in our society.
  4. Based on the foregoing, the examiner has no reason to believe the applied color marks have acquired a secondary meaning and played a role in identifying the source of Kubota’s farm tractors by itself.

Japan IP High Court ruled “athlete Chiffon” descriptive in relation to hotel and restaurant services.

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On October 12, 2023, the Japan IP High Court affirmed the JPO refusal decision to TM App no. 2021-93231 for word mark “athlete Chiffon” in class 43 due to a lack of distinctiveness.

[Court case no. Reiwa5(Gyo-ke)10038]

JPO refusal decision

Disputed mark, consisting of two words “athlete” and “Chiffon” in standard character, was filed for use of providing temporary accommodation; accommodation bureaux services; providing foods and beverages in class 43 with The Japan Patent Office (JPO) on July 27, 2021 (TM App no. 2021-93231).

The JPO examiner rejected the mark based on Article 3(1)(iii) and Article 4(1)(xvi) of the Japan Trademark Law by stating that relevant consumers at sight of the disputed mark would merely conceive of a restaurant to provide Chiffon cakes for athletes and it will cause misrepresentation of a particular quality of service when used on other services.

Applicant filed an appeal against the examiner’s rejection. However, the JPO Appeal Board sustained the examiner’s findings and decided to refuse the disputed mark on March 22, 2023.

Appeal to the IP High Court

On April 20, 2023, the applicant filed a lawsuit to dispute registrability of the disputed mark with the IP High Court and asked the court to annul the JPO decision based on the facts that the JPO has allowed registration of lots of trademarks containing the term “athlete”, but none of them restrict its usage of designated goods or services “for athletes”. Cake shops containing a term “Chiffon” in their trade name have even delt with cakes other than chiffon. If so, the JPO obviously made an error in denying distinctiveness of respective term “athlete” and “Chiffon”. Because of it, the JPO refusal decision shall be cancelled.

IP High Court decision

From the produced evidence, the IP High Court found that, in the industry of foods and beverages, terms such as “athlete cake” and “athlete pan cakes” are commonly used to indicate special goods and service for athletes. If so, relevant consumers and traders would consider a term consisting of “athlete” followed by generic word of goods or service as an indication to specify the target of the goods or service (for athletes). “Chiffon” is known in the industry as a term to indicate ‘food that is made light by adding the clear part of eggs that have been beaten’ and commonly used in conjunction with other descriptive term, e.g., “Choco chiffon”, “banana chiffon”, “Valentine chiffon”.

Under the circumstances, the court has a reason to believe that relevant consumers would consider the term “athlete Chiffon” as a mere descriptive indication of the restaurant to provide chiffon (cakes) for athletes when used in relation to the service in question.

Screen capture from “athlete Chiffron” facebook page

A fact that several cake shops containing a term “Chiffon” in their trade name have delt with cakes other than chiffon is irrelevant to the case given the consumers conceive of chiffon cake at sight of the term “athlete Chiffon” when used on restaurant service.

Based on the foregoing, the court held the JPO did not make any error in finding facts and applying trademark law and thus the disputed mark shall be unregistrable under Article 3(1)(iii) and 4(1)(xvi).

Japan IP High Court Decision to A Position Mark of Dr. Martens’ Yellow Welt Stitch

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On August 10, 2023, the Japan IP Hight Court ruled to dismiss an appeal by Airwair International Limited to the JPO’s rejection against a position mark for Dr. Martens’ Yellow Welt Stitch.

[Court case no. Reiwa 5(Gyo-ke)10003]

Dr. Martens’ Yellow Welt Stitch

Airwair International Limited, a UK company, applied a position mark consisting of a yellow stitching around the perimeter of footwear on the outer sole edge (see below) for use on leather shoes and boots in class 25 with the JPO on June 12, 2018 (TM App no. 2018-77608).

Allegedly, first use of the position mark on the Dr. Martens “1460” boots has dated back to 1960 in UK. Leather shoes and boots bearing the yellow welt stitch have been continuously distributed in Japan by the applicant or a local subsidiary (Dr. Martens Japan) via company store (61 shops at present) and major shoes retailers since 1985. Recent annual sales for Dr.  Martens’ shoes in Japan exceed 6 billion Japanese yens and over 460,000 pairs. Airwair has routinely monitored and taken legal actions against lookalikes of shoes bearing the yellow welt stitch and been successful in stopping distribution of following shoes.

According to the brand awareness survey that targeted a total of 1,019 men and women aged from 15 to 59, 30.7% of the interviewees who have purchased leather shoes and boots could answer Dr. Martens at the sight of black leather shoes with the yellow welt stitch and 37.6% selected Dr. Martens from multiple choice.

On August 23, 2022, The JPO Appeal Board decided the yellow stitching of Dr. Martens does not possess its own distinctive character by stating that relevant consumers would not see the stitch as a source indicator, but as a mere decoration. The Board also negated acquired distinctiveness of the position mark based on the fact that a majority of frequent users of the goods in question could not connect the stitch with Dr. Martens. Accordingly, the Board sustained the examiner’s rejection (Appeal case no. 2021-2446).

Airwair filed an appeal against the JPO Appeal Board decision and argued inherent and acquired distinctiveness of the Dr. Martens’ yellow welt stitch in relation to leather shoes and goods.

IP High Court decision

Inherent distinctiveness

The Court paid attention to the circumstance that plenty of leather shoes and boots have been manufactured by means of the Goodyear Welted Method for long years and the thread stitched to attach the upper to the sole has often identical or similar color to the upper and sole. If so, in relation to yellow-colored shoes, a yellow stitch would be anything but distinctive.

Bearing in mind that the applied mark does not specify a color of the upper and the sole, the judge had a view that it is allowed to assess inherent distinctiveness of the position mark in relation to the shoes with a yellow thread, upper and sole and any colors.

Based on the foregoing, the Court found the position mark lacks inherent distinctiveness in relation to leather shoes and boots and shall be unregistrable based on Article 3(1)(iii) of the Trademark Law.

Acquired distinctiveness

The Court questioned relevance of the brand awareness survey that excluded consumers who had not purchased either leather shoes or boots in the past year. However, by taking account of an expert opinion that points out 15% shall be sufficient to admit distinctiveness of trade dress as a source indicator especially in fashion industry and the survey revealed there were over four times as many interviewees who selected Dr. Martens than Timberland (7.9%) from multiple choice, the judge ruled Dr. Martens’ yellow welt stitch has acquired a certain degree of recognition as a sign that the black leather shoes originate from the Airwair company.

In the meantime, the Court held there is doubt if the position mark would play a role in indicating its source even when used on a yellow or similar colored outsole or welt. As a matter of fact, Airwair has not taken actions against shoes having non-black outsoles and welts.

Given the applied mark does not restrict a color of shoes, a fact that Dr. Martens’ yellow welt stitch has played a role of source indication in relation to black leather shoes and boots is insufficient to find acquired distinctiveness of the appled mark and admit registration under Article 3(2) of the Trademark Law.

Obviously, the Court opens a gate to register Dr. Martens’ yellow welt stitch provided that a position mark consists of yellow stich and black upper and welt.