FICPI China Symposium September 21, 2007
Non-traditional trademarks
Three Dimensional Trademarks in Japan, EU, USA
Hiromichi Aoki Partner, Patent Attorney Yuasa and Hara
Requirement for registration
Distinctiveness(inherently) Acquired Distinctiveness (secondary meaning) Functionality Utilitarian Functionality Aesthetic Functionality ?
Inherently distinctive
Registration No. 4925446 Designated Goods:Class 21 Pepper mill
Trademark
Registered
Actual Object
Mini Maglite Case
IP High Court, June 27, 2007
Designated goods: Flashlights (Drawings)
Mini Maglite Case
IP High Court, June 27, 2007
Actual Object
Mini Maglite Case
IP High Court, June 27, 2007
Japan Patent Office rejected 3D. No inherently distinctiveness and secondary meaning IP High Court admitted secondary meaning. No change of design since 1983 Sales in a year in Japan: 600,000 No similar design in the market(Litigation) Good advertisement appealing just shape Small word mark “Mini Maglite”
Registration in EU Secondary Meaning Reg. No. 1688563/ Jan. 23, 2002
Maglite Case ECJ rejected, Oct. 7, 2004
Case No.: C-136/02P Non inherently distinctive
Registration in USA Secondary Meaning
Past Cases IP High Court (Tokyo High Court) rejected
Lego® 3D Mark
Registration No. 4566490 Designated Goods:Class 9 TV games
Lego® 2D Mark
Registration No. 4478665 Designated Goods:Class 28 Block toy Tokyo High Court admitted secondary meaning
Tokyo High Court, Jan. 31, 2001 Similarity 3D and 2D
3D application Cited Mark(2D)
Mini Maglite Case
Plaintiff
Unfair Completion Prevention Law
Defendant
Unfair Competition Prevention Law(UCPL) Article 2.1.1
(Requirement) (Remedies) Widely – Injunction known(Defendant area) Damages Similarity of marks Criminal Confusion Sanction No limitation of period Recovery of reputation
Requirement for registration(Art. 7)
Distinctiveness(inherently) Acquired Distinctiveness (secondary meaning) Nature of goods Technical results Substantial value
ECJ, Dec. 3, 2003 Case: T305/02 Inherently distinctive
3D Mark Actual Bottle
OHIM, July 10, 2006 Case: R 856/2004-G Technical Results
Registration No. 107029 Registration Date October 19, 1999 Goods: Class 28 construction toys, playthings, etc. Canceled with respect to construction toys because of technical results
Requirement for Registration(Art. 2)
Distinctiveness(inherently) Acquired Distinctiveness (secondary meaning) Functionality Utility Functionality Aesthetic Functionality
Wal-Mart Case Supreme Court, March 22, 2000
With respect to configuration of goods, it is necessary to prove secondary meaning. (Samara) (Wal-Mart)
Thank you for your attention !
Hiromichi Aoki Partner, Patent Attorney
Yuasa and Hara
(formerly Visiting Professor, School of Law, Hokkaido University )
E-mail: aoki-tm@yuasa-hara.co.jp
http://www.yuasa-hara.co.jp/english/