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October 1, 2011 Vol. 66 No. 17 Back to Bulletin Main Page

JAPAN: Three Hurdles for 3D Trademarks

In June of this year, the IP High Court in Tokyo reversed the June 23, 2010, appeal decision of the Japan Patent Office (JPO) and found that the three-dimensional trademark (Application No. 2008-11532) for the well-known “Y” chair made by the Danish company Carl Hansen and Son was registrable. Carl Hansen & Son, Japan KK v. JPO (IP High Court June 29, 2011). The highly popular “Y” chair, now named the wishbone chair, was designed by Hans J. Wegner and has been in continuous production, with variations in color and material, since the 1950s.

The JPO had found that while the mark was easily distinguishable as a 3D representation of an armchair, providing an impression of excellent design and function, the mark per se was merely descriptive.

Although the IP High Court found that the mark was descriptive according to the provisions of Article 3(1)(3) of the Trademark Act, it overturned all the arguments of the JPO regarding Article 3(2). Specifically, based on evidence provided by the plaintiff (and discounted by the JPO), the court found that the mark met the requirements of distinctiveness based on the shape of the mark; start and duration of use; region of use; amount of goods sold; duration, region and scale of advertising; effort of applicant to challenge goods of a similar shape, etc., as related to Japan. In other words, the court found the mark to be distinctive based on various commercial activities of the plaintiff over a long period of time in Japan. Interestingly, even though not discussed in the appeal decision, the court also touched on registrability based on Article 4(1)(18) (regarding functionality of three-dimensional trademarks) and indirectly found that the mark was more than just purely functional.

This decision follows the decision in November 2010 regarding the application for a three-dimensional trademark for the ubiquitous (in Japan) plastic bottle for the lactic acid drink Yakult, where the court reached a similar conclusion and held that, “taking into consideration the long use and the remarkable sales record of the goods, the shape alone has acquired distinctiveness.” In 2008, Coca-Cola was the beneficiary of a similar court decision in Japan on its contour bottle, following the lead case on 3D marks (marks related to the Mini Maglight).

The IP High Court continues to make clear that a three-dimensional configuration that has acquired distinctiveness through use can be registered as a trademark, despite the very stringent examination guidelines at the JPO. Overcoming the three hurdles posed by Articles 3(1)(3), 3(2) and 4(1)(18) is tough, but not impossible.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2011 International Trademark Association