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

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.

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.

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

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.

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

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.

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.

Hermes Victory with Invalidating Birkin Lookalike Design

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.

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

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

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.

Tragic End of Trademark Challenge for Louboutin

In a series of Louboutin’s legal challenge to claim exclusive right over red soles, the Japan IP High Court, on the heels of the dismissal of Louboutin’s infringement claim on December 26, 2022, affirmed the JPO rejection to TM Application no. 2015-29921 for a red colored mark in sole and ruled Louboutin’s red soles shall be unregistrable under the Trademark Law on January 30, 2023.

[Court case no. Reiwa 4(Gyo-ke)10089]

Louboutin’s Red Soles

Fast on the heels of the introduction to register color marks in Japan, Christian Louboutin filed a trademark application for a color mark consisting of a red (Pantone 18-1663TP) colored in soles (see below) for use on high heels in class 25 on April 1, 2015 (TM App no. 2015-29921).


JPO Rejection

The JPO Appeal Board found the color mark perse lacks distinctiveness in relation to the goods in question by taking into account the fact that a lot of shoes with red-colored soles have been distributed by other shoemakers in Japan.

Besides, under the current trade practice, the Board considered it will inevitably cause a severe disorder and excessive restriction to competitors if it allows registration of a red color that has been freely used in the relevant industry to enhance the aesthetic appearance of shoes. Based on the foregoing, the JPO concluded the color mark shall not be registrable under Article 3(2) as well.

Louboutin brought the case to the IP High Court and appealed to cancel the JPO decision.


IP High Court decision

In the decision, the IP High Court expressed a view that a trademark consisting of a single color shall not be registrable unless it has acquired an extremely high degree of recognition to indicate a specific source as a result of substantial use to the extent that exclusive use of the color would not cause detrimental effect to the public in general.

In this respect, the court affirmed the JPO findings that a lot of heels with red-colored soles have been distributed by other shoemakers in Japan for years and negated the inherent distinctiveness of the red-colored mark.

In the assessment of acquired distinctiveness, the court found the survey that demonstrated 51.6% of the interviewees (3,149 females, aged from 20 to 50) having a domicile in three big cities (Tokyo, Osaka, or Nagoya) was insufficient to find acquired distinctiveness of the red soles among relevant consumers, assuming that the percentage would become lower if the survey targets more females residing in other cities nationwide.

Even if Louboutin’s red soles have become famous among consumers who have a high interest in luxury brands, the Court has no reason to believe that the red colored mark has acquired an extremely high degree of recognition as a source indicator to the extent that general public would tolerate its exclusive use on soles.

Based on the foregoing, the IP High Court affirmed the JPO decision and dismissed entire allegations by Louboutin.


Consequently, Louboutin’s legal challenge was decisively blown off by two IP High Court rulings unless the Supreme Court holds out its hand on Louboutin.

IP High Court Rules Lego 3D Figure Mark Unregistrable

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.

“OLYMPIAD vs OLYMBEER” trademark battle

The Japan IP High Court reversed a decision of the JPO that canceled the OLYMBEER mark due to its similarity to “OLYMPIAD” in contravention of Article 4(1)(vi) of the Trademark Law.

[Court case no. Reiwa4(Gyo-ke)10067, Judgment date: December 26, 2022]

OLYMBEER

SJP & Co., a Japanese company, filed a trademark application for the wordmark “OLYMBEER” with its transliteration written in Japanese Katakana character (see below) for use on beers, refreshing beverages, fruit juices, vegetable juices, extracts of hops for making beer, whey beverage in class 32 with the JPO on October 28, 2019, ahead of the opening of the Tokyo 2020 Olympic games.

The JPO examiner did not raise any objection to the OLYMBEER mark and granted protection on November 16, 2020 (TM Reg no. 6323630). Subsequently, the mark was published for opposition on December 22, 2020.


Opposition by IOC

The International Olympic Committee (IOC) filed an opposition against the OLYMBEER mark on February 22, 2021, before the lapse of a two-month statutory period counting from the publication date and claimed the OLYMBEER mark shall be canceled in contravention of Article 4(1)(vii), (xi) and (xv) of the Japan Trademark Law by citing “OLYMPIC” and “OLYMPIAN” mark.

In the course of trial proceedings, the JPO notified at their discretion that the opposed mark shall be canceled in contravention of Article 4(1)(vi) due to a similarity to “OLYMPIAD” which has become famous to represent the modern Olympic Games.

Article 4(1)(vi)  

The article is a provision to prohibit registration of any mark that is identical with, or similar to, a famous mark indicating the State, a local government, an agency thereof, a non-profit organization undertaking a business for the public interest, or a non-profit business for the public interest.

The Trademark Examination Guidelines (TEG) specify “IOC”, and “Olympic” shall be protectable under the article.

Consequently, the JPO decided to cancel the opposed mark based on Article 4(1)(vi) irrespective of no reference to the article by the IOC.


SJP & Co. brought the case to the IP High Court and argued that “OLYMPIAD” would not be such a famous mark as opposed to “Olympic” and the opposed mark is dissimilar to “OLYMPIAD” in its entirety from appearance, sound, and meaning.


IP High Court ruling

The IP High Court questioned if “OLYMPIAD” has become famous among relevant consumers and traders in relation to the goods in question from the produced evidence. If so, it is inadequate to assess the similarity of marks on the assumption that “OLYMPIAD” has acquired a substantial reputation.

The judge said in the decision a mere coincidence of “OLYM” is insufficient to find the similarity between “OLYMBEER” and “OLYMPIAD”. The judge stated that there is no reason to believe both marks are visually, phonetically, and conceptually similar when compared as a whole.

Based on the foregoing, the court found the JPO erred in applying Article 4(1)(vi) of the Trademark Law by wrongly finding the similarity of mark between “OLYMBEER” and “OLYMPIAD”, and thus the court ruled to reverse the JPO decision.