Intellectual Property High Court, Decisions of 29 June 2011 and 21 April 2011

In two recent decisions, the Intellectual Property High Court ruled that three-dimensional trademarks for product shapes can be registered if consumers were able to recognize the products as pertaining to a business of a particular person as a result of the use of the trademark.

In the first case, Carl Hansen & Son Japan K.K. (Carl Hansen & Son), an affiliate company of the Danish furniture manufacturer Carl Hansen & Son Mobelfabrik A/S, applied for the registration of a three-dimensional trademark "Y-Chair" for armchairs.

Click here to view image of Carl Hansen & Son's trademark application for the "Y-Chair".

The examiner of the Japan Patent Office (JPO) refused the registration.

Carl Hansen & Son filed a request for a trial against the decision.

However, the JPO upheld the decision, holding that (1) the mark lacked distinctive character according to Article 3 (1)(3) of the Japanese Trademark Act (JTMA), and (2) the requirement of Article 3 (2) JTMA – namely that consumers were able to recognize the goods as pertaining to a business of a particular person as a result of the use of the trademark - was not fulfilled.

Carl Hansen & Son brought an appeal against this decision.

The Intellectual Property High Court confirmed the JPO's decision regarding Article 3 (1)(3) JTMA, holding that although the trademark applied for had a characteristic shape which gave the consumers the impression that it has an excellent design and function as an armchair, it only consisted of a mark indicating the shape of the armchair in a common way, so that the trademark was deemed descriptive.

However, the court annulled the JPO's decision regarding Article 3 (2) JTMA, holding that the trademark acquired distinctiveness through a secondary meaning. The characteristic shape of the armchair had the same design since 1950. A large number of the armchairs had been advertised and sold since then so that the consumers could identify the origin of the armchairs.

The court disagreed with the JPO that the trademark applied for and the mark actually used were not the same because Carl Hansen & Son's armchairs varied in colors and, therefore, gave the consumers the impression of goods different from that of the trademark applied for. The court held that the consumers' recognition of the origin of Carl Hansen & Son's armchairs did not substantially vary by the difference in material and color because the trademark applied for had acquired distinctiveness due to its characteristic shape.

The court also dismissed the JPO's argument that the trademark had not yet acquired distinctiveness since there were a lot of armchairs with a similar shape sold online. The court considered that such armchairs were sold as "generics" or "reproductions" of the "Y chair" to consumers who wanted to purchase such a design at a low price. Carl Hansen & Son had taken measures against the companies selling such armchairs as to remove those armchairs from the marketplace, including sending warning letters to them.

In the second case, Beaute Prestige International, an affiliated company of Shiseido Co., Ltd., applied for the registration of a three-dimensional trademark for a flacon of the perfume "JEAN PAUL GAULTIER CLASSIQUE".

Click here to view image of Beaute Prestige International's trademark application for "Jean Paul Gaultier Classique" perfume flacon.

The JPO refused the registration.

The Intellectual Property High Court annulled this decision and held that the trademark should be registered on the ground of acquired distinctiveness under Article 3 (2) JTMA.

The court considered that the shape of the trademark had a uniqueness which could not be found easily and created a strong impression on the consumers. The shape had been used for the perfume flacon for 15 years. Although the sales areas, the sales figures and the advertising costs were not clear, the court found that it was possible for a product shape to acquire distinctiveness because of its uniqueness. The shape of the perfume flacon was so unique that consumers who saw it in magazine advertisements recognized the flacon shape as pertaining to the business of Beaute Prestige International since perfumes are luxury products and different from inexpensive daily commodities.

Considering these latest court's judgments, a three-dimensional trademark application for the shape of a product is deemed descriptive and falls under Article 3 (1)3 JTMA if it relates to a predictable shape which is merely one option to improve the function or the design of the product - even if is a characteristic shape. At the same time, the identity between the trademark applied for and the sign actually used is not strictly required. Furthermore, Article 3 (2) JTMA is applied flexibly, considering, inter alia, the consumer's view point and awareness as well as the characteristics of the shape of the goods.