Eiichi Fukushima September 12 2011 Smell of success for three-dimensional trademark Nishimura & Asahi (Gaikokuho Kyodo Jigyo) | Intellectual Property - Japan Eiichi Fukushima Intellectual Property SummaryBackgroundFactsPatent Office decisionIP High Court decisionFurther casesSummaryOn April 21 2011 the IP High Court reversed a trial decision in which the Patent Office had rejected the registration of a three-dimensional trademark for the bottle used for Jean Paul Gaultier Classique perfume products. The products are manufactured and sold by Beauté Prestige International (BPI), which had sought registration for "beauty products (cosmetics), soaps, perfumery [and] cosmetics". The court ruled that although the mark was descriptive under Article 3(1)(3) of the Trademark Law (127/1959, as amended), it had obtained the distinctiveness required under Article 3(2) of the law.Background The three-dimensional trademark system was introduced on April 1 1997 by amendments to Law 68/1996 and is set out in Article 2(1) of the Trademark Law. Although the Patent Office has accepted a small number of applications for three-dimensional trademarks, this is only the third case in which the court applied the provisions of Article 3(2), notwithstanding the provisions of Article 3(1)(3), in cases involving a three-dimensional container trademark.In May 2008 the IP High Court issued a decision in favour of an applicant, applying Article 3(2) in a case involving a trademark which consisted of a three-dimensional container (ie, a Coca-Cola bottle) (for further details please see "Court allows registration of Coca-Cola bottle as three-dimensional trademark"). In November 2010 another division of the court issued a decision in favour of an applicant, applying Article 3(2) in a case involving another beverage container, this time for probiotic drink Yakult.Article 3(1)(3) provides that trademark registration cannot be obtained:"in the case of a trademark that consists solely of a mark indicating in a common way the place of origin, place of sale, quality, raw material, efficacy, use, quantity, shape (including packaging shape) or price of the goods, or the method or time of manufacturing or using them; or the location of provision of services, quality, articles for use in such provision, efficacy, use, quantity, modes, price or the method or time of the provision of services."Article 3(2) provides that:"in the case of a trademark falling under Items 3 through 5 of the preceding paragraph, where, as a result of the use of such trademark, customers are able to recognise the goods or services as being connected with a certain person's business, trademark registration may be obtained notwithstanding the provisions of the preceding paragraph."Article 4(1)(18) provides that registration cannot be obtained:"in the case of a trademark consisting solely of a three-dimensional shape of goods or their packaging, where the shape is indispensable to the functions of the goods or their packaging."Facts The applicant, BPI, manufactured and sold cosmetics under the Jean Paul Gaultier brand. It filed an international application for a three-dimensional trademark for the following shape in Class 3 on April 28 2006 (ie, the date of designation for Japan).The examiner in charge issued a rejection notice on June 27 2008. The applicant objected, filing a petition for a trial hearing on October 7 2008.Patent Office decision On July 15 2010 the Patent Office issued a trial decision that confirmed the original rejection and dismissed the applicant's petition for a trial hearing.On the question of the applicability of Article 3(1)(3), the Patent Office held as follows: The three-dimensional trademark covers the shape of goods, their packaging or articles for use in the provision of services where the shape has been chosen for the purpose of effectively performing the function of the goods, or for aesthetic reasons. Thus, the shape was not originally adopted as an indication of source or to distinguish such goods or services from those of others. Even if modifications or decorations with special features were added to the shape of the goods, these were added for the purpose of performing the function or enhancing the attractiveness of the goods, and were not originally adopted as indications to distinguish such goods from those of others. Thus, if the goods - viewed as a whole - have the shape necessary for performing their function or enhancing their attractiveness, vendors and consumers will interpret the shape simply as the shape of the goods. Even if such a shape is to some extent unusual (in relation to the function or attractiveness of the goods), it does no more than indicate the shape of the goods in a common way. Similar goods must be of a similar shape in order to perform a similar function. Thus, it is inappropriate to allow one individual or entity to monopolise such a shape; rather, anyone should be able to use it. Therefore, a trademark which consists of a three-dimensional shape that can be recognised as the shape of the goods falls under Article 3(1)(3). Such a mark cannot be registered unless: the trademark is of an extraordinary shape that is unrelated to the function or attractiveness of the goods; or the shape has come to be recognised as clearly distinguishable from similar goods, among vendors and consumers, as not merely indicating the origin of the trademark relating to the shape as a result of use. In this case the bottle was in the shape of a woman's neck and torso, the upper part of which, in metal, was readily recognisable as the spray mechanism and cap. The lower portion, from the neck down, was made of pink, semi-transparent, half-frosted glass. This section could be easily identified as containing the liquid. In relation to the designated goods, it was recognisable as a type of container holding liquids such as "perfumes and toilet lotions". The court found that the bottle, if used for the designated goods, might simply be regarded by vendors and consumers as a container holding the goods. The Patent Office's reasoning on the applicability of Article 3(2) was as follows: Although the trademark in the application consisted of a three-dimensional shape only, the trademark in actual use included the combination of a three-dimensional shape, a device mark and a differently shaped three-dimensional mark. Therefore, when each was considered as a whole, the trademark in the application and the trademark in actual use were not identical. The goods for which the trademark was used were perfumes, whereas the designated goods covered by the application included goods other than perfume. Thus, the designated goods in the application were not limited to the goods in actual use. Therefore, the Patent Office could not hold that the trademark under the application had come to be recognised as identifying goods connected with a certain party's business among consumers as a result of longstanding use in connection with the designated goods (ie, beauty products, cosmetics, soaps and perfumery). As such, the trademark was found not to satisfy the requirements of Article 3(2). IP High Court decision The applicant appealed to the IP High Court, which reversed the Patent Office's decision. The court's reasoning on the applicability of Article 3(1)(3) was as follows: Under Articles 2(1) and 5(2), a trademark which consists of a three-dimensional shape (including any combination of letters, devices, symbols or colours) may be registered if it satisfies certain requirements. However, Article 4(1)(18) provides that registration cannot be obtained, regardless of the provisions of Article 3, for a trademark "consisting solely of the three-dimensional shape of goods or their packaging where the shape is indispensable to... the function of the goods or their packaging". A three-dimensional shape that is indispensable to the function of the goods may not be monopolised. In many instances the shape of goods or their packaging is chosen to make the goods more attractive or to make them perform their expected functions more effectively. In such cases the shape cannot be said to have been adopted for the purpose of immediately indicating the source of the goods or distinguishing the goods from those of others. Where the shape of the goods is recognised as having been chosen to facilitate the function or enhance the attractiveness of the goods, and unless special circumstances apply, such shape will be subject to Article 3(1)(3) as a trademark that consists solely of a mark indicating, in a common way, the shape of the goods. A shape that is intended to facilitate the function or enhance the attractiveness of the goods is desirable for parties using such a shape for similar goods. Therefore, it is not in the public interest to allow such a shape to be monopolised purely on the basis of a trademark application. Insofar as it is foreseeable that the shape is likely to be used for similar goods with this 'function or attractiveness' aim in mind, Article 3(1)(3) applies even if the shape has special features. However, registration may be allowed in the case of a three-dimensional shape that is not considered indispensable to the function of the goods or their packaging, even if it is chosen in order to promote the function or attractiveness of the goods, if it is used as a mark to distinguish the goods from those of others by indicating their source and thereby achieves sufficient distinctiveness to distinguish the goods. The three-dimensional shape in the application was considered to have been chosen for the purpose of facilitating the function or attractiveness of the perfume container. The court held that the shape of the container fell within the scope of Article 3(1)(3), being likely to be used for the purpose of facilitating the function or enhancing the attractiveness of the product in the eyes of the average consumer.On the applicability of Article 3(2), the court reasoned as follows: Article 3(2) provides that a trademark which is deemed to consist solely of a mark indicating in a common way the shape of the goods under Article 3(1)(3) of the law can be registered if, as a result of use, it achieves distinctiveness as an indication of source. In determining whether a trademark which consists of a three-dimensional shape has achieved distinctiveness in this way, all relevant factors should be considered, including: the shape of the trademark and the existence of similarly shaped goods; and the period of use of the trademark, sales volumes and the duration and scale of advertising and promotional campaigns for the product. The court held as follows: The container part of the bottle shape was in the form of a woman's torso with two projecting portions corresponding to breasts, a tapered section corresponding to a waist and an area corresponding to the lower abdomen. As there was no other container in the same style or shape, with these special features, the three-dimensional shape was attractive to consumers and left a strong impression on them. The container has been sold for more than 15 years since 1994 and had appeared in professional perfumery magazines and general fashion magazines. The three-dimensional shape of the mark had independently obtained the necessary distinctiveness to distinguish it from the products of others. Thus, vendors and consumers could easily distinguish the applicant's goods. As the trademark had obtained recognition - and had made the product identifiable as being sold by the plaintiff - as a result of its use with the designated goods, it was held to satisfy the requirements of Article 3(2) of the law. The trademark had obtained sufficient distinctiveness to distinguish the perfumes from others, although it was used in connection with limited designated goods (eg, cosmetics) that are closely related to perfumes. There was a large overlap between vendors and consumers of the designated goods and vendors and consumers of perfume. The former group would easily recognise that the goods were also sold by the applicant, which sold perfume under the Jean Paul Gaultier brand. Therefore, the court upheld the appeal. Further cases This was the third case involving a three-dimensional shape of goods to come before the court. The decision is a strong indication that the court will take the same position on the applicability of Article 3(2) if similar cases arise in future. BPI brought two further cases involving three-dimensional trademarks of perfume containers. The containers in question - for products called l'Eau d'Issey and Jean Paul Le Male - are shown below.In the case involving the l'Eau d'Issey bottle, the court refused to apply Article 3(2) of the law because: the trademark for which the application had been made had not obtained the necessary distinctiveness; and the designated goods of this application cover various goods where the vendors and consumers are different from those for perfume and thus turned down the appeal by BPI. In the case involving the Jean Paul Le Male bottle, the court simply applied Article 3(1)(3) and rejected the appeal. BPI did not raise the issue of Article 3(2).For further information on this topic please contact Eiichi Fukushima at Nishimura & Asahi by telephone (+81 3 5562 8500), fax (+81 3 5561 9711) or email ([email protected]).