【Trademark Act★】 A case in which the Intellectual Property High Court maintained the JPO’s decision of refusal, holding that a trademark as applied for, relating to a three-dimensional form of a tooth model fixing plate with support stand for dental work, falls under Article 3, Paragraph 1, Item 3 of the Trademark Act and does not fall under Paragraph 2 of the same Article.

Trademark in the Application

Intellectual Property High Court Decision of December 25, 2024 (Case No. 10058 [Gyo-ke] 2023―Presiding Judge Shimizu)

◆Main text of the case

【Summary of the Judgment】

1. Concerning whether the trademark as applied for falls under Article 3, Paragraph 1, Item 3 of the Trademark Act

(1) Concerning criteria for determining whether trademarks for forms of goods fall under Article 3, Paragraph 1, Item 3 of the Trademark Act

Goods having a form which is objectively considered to be adopted for the purpose of function or aesthetics are reasonably recognized as forms of goods indicated in a common manner, unless there are special circumstances. In other words, it should be said that the three-dimensional form of goods falls under “indicating forms of goods in a common manner” of Article 3, Paragraph 1, Item 3 of the Trademark Act, when the forms can be predicted to be within the scope of a choice of form that contributes to the functionality or aesthetics of the goods, based on constraints arising from the intended use and nature of the goods, even though the forms have other unique characteristics.
 
(2) Decision

Included in the form of the trademark applied for, (1) a rectangular prism with a slightly elliptical top surface (the bottom surface is hollowed out) and (2) a form with holes, indentations, protrusions, etc. arranged regularly on the top surface and sides, can be considered the form of a general dental model support stand (“support stand”). The central portion of the upper surface has five holes arranged in a single row at equal intervals, and on the inner sides of the longitudinal edges on both sides, there are inclined continuous projections. The inclined portions of these continuous projections have multiple semicircular notches (First Characteristic Form). Additionally, between one of the continuous projections and the central continuous holes, multiple small projections are arranged in a single row in a dotted-line pattern (Second Characteristic Form). As disclosed in the patent specification owned by the Plaintiff, these forms serve not only for inserting dental dowel pins of a fixing plate into the holes of the support base, but also for enhancing the connecting strength between the support base and the fixing plate, thereby functioning as an auxiliary connecting structure. Furthermore, as the Plaintiff has registered a partial design for items with the same forms as above, it is recognized that the forms are intended to enhance the aesthetic appearance of the support stand. On the other hand, it is recognized that many goods of the same type manufactured and sold by competitors have various irregular features, indentations, and protrusions, including around the holes on the upper surface and along the edges. Thus, even if the irregular features, indentations, protrusions, etc. on the support surface of the trademark in question are not found in the goods of other companies, it is reasonable to recognize that such features fall within the scope that can be predicted as a choice of form intended to contribute to the functionality or aesthetics of similar goods, subject to constraints based on the use and nature of the goods in question.

 
2. Concerning whether the trademark applied for falls under Article 3 Paragraph 2 of the Trademark Act

(1) Concerning criteria for determining whether trademarks for forms fall under Article 3, Paragraph 2 of the Trademark Act

With regard to trademarks consisting solely of a three-dimensional form of goods in a manner commonly used and when applying Article 3, Paragraph 2 of the Trademark Act, in order to permit the repeated renewal of the terms of registration, thereby effectively allowing the use of the form as a trademark and the exclusive sale of goods bearing the form on a semi-permanent basis, it must be recognized that sufficient distinctiveness to distinguish the goods of one from those of others has been acquired through the use of the trademark. Then, whether such distinctiveness has been acquired should be determined by comprehensively considering (a) the form of the trademark in question and the existence of other goods with similar forms, and (b) the circumstances of use, such as the period during which the trademark was used, the sales volume of the goods, and the period and scale of advertising and promotion.
 
(2) Decision

The three-dimensional form of goods used for the trademark in question cannot be recognized as a distinctive feature that is not found in other goods. Although said goods have achieved a certain level of sales, they cannot be considered to have a large market share, and it is difficult to evaluate their sales performance as remarkable. In addition, in terms of the actual sales and advertising of support stands, it is recognized that traders and consumers have distinguished between the Plaintiff’s goods and the goods of other companies based on the names of the goods and the types of support stands and fixing plates of the goods in question, as well as on photographs showing the two combined or separated, and it cannot be said that the actual transactions necessarily focused on the form of the upper surface of the support stands. Considering these circumstances, even if dental technicians, who are the primary users of the support stands, were to recognize as a fact the form of the trademark in question through their use of the goods in question, it cannot be concluded that the trademark in question which, although it consists solely of a mark used in the manner commonly used for the form of goods, has later acquired sufficient distinctiveness such that trademark registration should be granted by applying Article 3, Paragraph 2 of the Trademark Act.

【Comments】

1. Concerning whether the form of an appellee’s goods falls under the category of well-known indications of goods or business

(1) Concerning criteria for determining whether trademarks for forms of goods fall under Article 3, Paragraph 1, Item 3 of the Trademark Act

With regard to criteria for determining whether trademarks for forms of goods fall under Article 3, Paragraph 1, Item 3 of the Trademark Act, in recent court cases, the following judgments have been made:

The ruling in Summary 1 is in line with the majority opinion described in Opinion ① above. Recent court rulings (especially the Intellectual Property High Court Decision of February 12, 2020, the Intellectual Property High Court Decision of December 15, 2020, and the Intellectual Property High Court Decision of December 26, 2022) have interpreted the criteria for the latter half of Opinion ① as an example of the criteria for the former half, namely “special circumstances.” However, an academic opinion (Masaharu Miyawaki “Concerning whether trademarks consisting solely of the three-dimensional form of designated goods or their containers fall under Article 3, Paragraph 1, Item 3 and Paragraph 2 of the Trademark Act” in Law & Technology No. 95, p. 46 [in Japanese]) has pointed out that the criteria for the latter half of Opinion ① alone are sufficient, and that there is no need for other “special circumstances.” This court ruling is understood to align with this view, positioning the criteria for the latter half of Opinion ① as a specific example of the criteria for the former half – namely, “special circumstances.”
 
(2) Decision

In Summary 1 (2), the court held in accordance with the criteria for the latter half of Opinion ① that it is recognized the three-dimensional form of the support stand used for the trademark application in question as being within the scope of a choice of form that contributes to the function or aesthetics of the same kind of goods under the constraints arising from the intended use and nature of support stands; thus, the trademark falls under Article 3, Paragraph 1, Item 3 of the Trademark Act. In particular, it is worth noting the point that the distinctive form of this support stand being for the function or aesthetics of the goods has been recognized with reference to the Plaintiff’s own patents and design registrations relating to this support stand.

 
2. Concerning criteria for determining whether trademarks for forms fall under Article 3, Paragraph 2 of the Trademark Act

(1) Concerning criteria for determining whether trademarks for forms fall under Article 3, Paragraph 2 of the Trademark Act

Concerning the criteria for determining whether trademarks for forms fall under Article 3, Paragraph 2 of the Trademark Act in recent court cases, the court rulings are as follows in relation to the relevant circumstances to be considered comprehensively for determining whether distinctiveness is obtained through use: (1) cases in which the circumstances are simply listed (Intellectual Property High Court Decision of June 27, 2007 (Maglite case); Intellectual Property High Court Decision of May 29, 2008 (Coca-Cola case); Intellectual Property High Court Decision of June 29, 2011 (Y Chair case); Intellectual Property High Court Decision of February 12, 2020 (convection-type oil stove); Intellectual Property High Court Decision of December 15, 2020 (“yakiniku” sauce container case)); and (2) cases in which they are divided broadly into two categories, as in latter half of the Summary of judgment 2 (1) (Intellectual Property High Court Decision of April 21, 2011 (L’eau d’Issey case); Intellectual Property High Court Decision of April 21, 2011 (Jean Paul Gaultier “Classique” case); Intellectual Property High Court Decision of January 14, 2018 (piling case); Intellectual Property High Court Decision of July 24, 2019 (concrete pile case); Intellectual Property High Court Decision of December 26, 2022 (LEGO Minifigure case)).

The latter view in recent court cases is interpreted as corresponding to the necessary requirements of special distinctiveness and well-known fame for the form of goods that fall under “Indication of goods” of Article 2, Paragraph 1, Item 1 of the Unfair Competition Prevention Act. However, even the former view, when applied to specific cases, is often examined in the same way as the latter view, and divided into two categories. Therefore, it seems that there is no significant difference between the two views in terms of application.

In academic theory, the circumstances to be considered in the two categories from the point of view of Opinion ② are interpreted to be determined in a correlative manner, similarly to the application of the requirements of “special distinctiveness” and “well-known fame” for the form of the goods to fall under “Indication of goods” of Article 2, Paragraph 1, Item 1 of the Unfair Competition Prevention Act (Hiroya Aoki “Registration Requirements for Three-dimensional Trademarks” AIPPI Vol. 58, No. 5, p. 341 [in Japanese]; Makiko Takabe “Trademarks Which Obtained Distinctiveness through Use” in “Commemorative Papers in Honor of Kazufumi Doi’s 70th Birthday ‘The Dawning (Morgenrot) of Intellectual Property Law’” Chuo Keizai Group Publishing 2017, p. 5 [in Japanese]).
 
(2) Decision

In the Summary of Judgment 2 (2), the same as the Intellectual Property High Court Decision of April 21, 2011, the Intellectual Property High Court Decision of January 15, 2019, and the Intellectual Property High Court Decision of July 24, 2020, the court determined the circumstances to be considered in two categories under the Opinion ② view, in a correlative manner, as follows: With regard to the first of the circumstances to be considered, the three-dimensional form of the goods in the application cannot be recognized as a distinctive feature that is not found in other goods; thus, with regard to the second of the circumstances to be considered, the circumstances of use are necessary to a considerable extent. However, the goods in the application cannot be considered as having a large market share, and their market performance cannot be evaluated as significant. Moreover, in terms of actual sales and advertising of support stands, it is recognized that traders and consumers have distinguished between their own and others’ goods based on the name of goods and type of support stands and fixing plates of the goods in question, as well as on photographs showing the two combined or separated; therefore, it cannot be said that the actual transactions necessarily focused on the form of the upper surface of the support stands. From the foregoing, it can be understood that the court has denied the acquisition of distinctiveness through use.

【Keywords】Three-dimensional Trademark; Three-dimentional Form of Goods; Article 3, Paragraph 1, Item 3 of the Trademark Act; Function of Goods; Aesthetics of Goods; Article 3, Paragraph 2 of the Trademark Act; Acquisition of Distinctiveness through Use; Adaptability for Exclusive Use

※ The contents of this article are intended to convey general information only and not to provide any legal advice.

Kei IIDA (Writer)

Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)

Contact information for inquiries: k_iida☆nakapat.gr.jp　(Please replace ☆ with @)