Japan's IP High Court finds 3D seashell chocolate bar shape inherently distinctive and registrable without secondary meaning evidence

Authors: John A. Tessensohn and Shusaku Yamamoto (Shusaku Yamamoto, Osaka)

Citation: Journal of Intellectual Property Law & Practice 2009 4(7):461-463; doi:10.1093/jiplp/jpp078

Chocolaterie Guylian NV v Commissioner of Japan Patent Office, Case No. H-19 (gyo-ye) No. 10293, 30 June 2008, Intellectual Property High Court of Japan (IPHCJ)

This decision is a significant pro-trade mark development, being the first time that an appellate Japanese court has held that a 3D shape was inherently distinctive and registrable, outlining the distinctiveness criteria which will control future 3D trade mark examinations.

The IPHCJ revoked the Japanese Patent Office (JPO) Board of Appeals' non-distinctiveness decision and held that the 3D shape of a seashell-featured chocolate bar was inherently registrable, the JPO having failed to discharge its evidentiary burden to support its non-distinctiveness rejection.


Chocolaterie Guylian, the Belgian chocolatier known for its famous Guylian brand, those ubiquitous seashell-shaped chocolates found at duty free shops in most international airports, filed an International Registration 803104 to register an application for a 3D trade mark (consisting of four shell-shaped chocolates, shown below) for ‘chocolate and pralines’ in class 30.

The JPO rejected the application as lacking distinctiveness. Guylian appealed, but the JPO Appeal Board dismissed Guylian's appeal, maintaining that the 3D mark was unregistrable on non-distinctiveness grounds under section 3 of Japan's Trade Mark Law since it consisted ‘solely of a mark indicating, in a common manner, the quality, efficacy, quantity, shape of goods ...’ . The JPO Appeal Board found that it was not inherently distinctive; nor had the 3D mark acquired distinctiveness. Guylian appealed to the IPHCJ, which has exclusive supervisory jurisdiction over all JPO Appeal Board decisions.


Section 3(1)(iii)
In accordance with the applicable precedent of Supreme Court decision Otsuka Pharmaceutical v Sankodo, Case No. Showa 53 (gyo-tsu) 129 of 10 April 1979, defining the meaning of section 3(1)(iii) of the Trade Mark Act, the IPHCJ understood the ‘inherently unregistrable trade marks’ provided for in this provision as comprising just two types of unregistrable marks:
Category 1: marks not suitable for monopoly: Marks that are not suitable for a particular party to enjoy an exclusive right to use since any party may feel necessary to use them as appropriate mark in trading; and
Category 2: marks lacking the ability to distinguish: Marks that are generally used and, in most cases, cannot function to identify a source due to their lack of distinctiveness.
In light of the Supreme Court precedent, the IPHCJ felt that the fundamental issue was whether the configuration of the seashell chocolate belonged in either of those disqualifying categories.
The IPHCJ found that the seashell chocolate bar consists of the following three elements in combination:
the rectangular chocolate bar is divided by straight grooves into four consecutive square blocks;

on each block, there is an object representing a prawn, a fan-shaped shell, a sea-horse, or a blue mussel, in this order and

each shellfish is coloured in a marble-like pattern.
The JPO submitted evidence that several other producers had sold the following products: (i) chocolates in the form of a plain bar or rectangular plate with straight grooves dividing the bar to form several consecutive blocks (a common chocolate bar type); (ii) chocolates in the shape of a leaf, nut, prawn, seashell, sea-horse, etc. (a common 3D type); (iii) chocolates composed of circular, oval, or rectangular base with a piece(s) in the shape of a leaf, fruit mounted thereon (a common decorated 3D type), and (iv) chocolates composed of a bar having crossing grooves to form square blocks on its surface with a hat-shaped 3D piece mounted on each block.
Nonetheless, the IPHCJ found that the appellant's 3D configuration was different from these commonplace products:

This three-dimensional shape of chocolate bar is distinct and unique in the sense that no evidence presented by the parties shows the existence of any other similar shapes or configurations in terms of the choice of the four species of shellfish and the three-dimensionally modelled designs thereof, the sequential arrangement thereof, and also the coloured marble-like pattern.

Having held that the Seashell Bar configuration did not fall within scope of the Category 1 unregistrability criteria, the IPHCJ then considered whether the chocolate bar should be regarded as a mark within Category 2. On the basis of the same descriptive analysis, the IPHCJ opined as follows:
The overall impression given by the combined factors (a)–(c) is so distinctive as compared with others that general consumers may use it as an identifier when they make a decision as to which chocolate to buy or not to buy on the next occasion of purchase. The methodological way of arranging shellfish, etc. as used in the plaintiff's chocolate bar would, as the JPO argues, not be original. However, the configuration of the chocolate bar with the actual and material combination of the said elements defined as above is found to be original, novel and distinctive, and it is assumed that this level of distinctiveness would enable the general public, having eaten the Seashell Bar, to distinguish it from others both by the taste they had experienced, and by its novel shape.
The IPHCJ thus held that the present trade mark composed of a Seashell Bar configuration was inherently registrable as a Category 2 mark.

In response to the defendant's argument that only unusual shapes, unrelated to the function or aesthetic features of a product, have inherent distinctiveness, the IPHCJ specifically added: (i) as the inherent value of products indeed resides with their functions and aesthetic features, it is scarcely possible to imagine the actual existence of such a shape or configuration of product that could meet the criteria argued by the JPO and (ii) such an argument is considered to be an excessively abstract position and unreasonably frustrates the rationale for the legislation covering 3D trade mark registration.

The IPHCJ added that, although a manufacturer chooses the shape of a product mainly on the basis of function and visual attractiveness, it is natural that the shape simpliciter plays a role when a consumer is choosing a product and it is a given that the manufacturer has this in mind when creating a product. Thus, it is not appropriate to apply a blanket per se rule that a shape trade mark is always non-distinctive simply because it is a feature of the product, as the JPO had done in this instance.

The IPHCJ rejected the JPO's arguments that a 3D mark consisting solely of the shape of the product will lack distinctiveness, if it is recognized as generally suitable for use as a distinctive shape of the product.

Practical significance

The IPHCJ will register the 3D shape trade mark so long as that mark is taken by consumers to be an indicator of commercial origin and possesses inherent distinctiveness. The IPHCJ Chocolate Seashell decision will make it easier and less expensive to register inherently registrable 3D marks or configurations in Japan.

Under the Trade mark Examination Manual of the JPO, marks ‘consisting exclusively in the shape of goods’ are generally held to be perceived by consumers to be merely ‘within the scope of the shape of the designated goods (including the shape of their packaging), or the shape of an article used in provision of the designated services’ or to be composed exclusively of ‘the common shape of a building, where the designated services concern immovables, e.g., services in the building- or construction industry’.

The JPO declined to register 3D marks even if their ‘shapes of products, which are substantially different from the usual shapes of the kind of goods found on the market and products, which embody decorative elements, as well as products which are new and unusual or characteristic in appearance. Such shapes will be held to be within the range of shapes which might be adopted by competitors in the future’.

The IPHCJ had little sympathy with the JPO's overly restrictive 3D examination policy, which broadly and repeatedly held many 3D shapes to be unregistrable; that exclusionary rule was generously interpreted, resulting in the blanket exclusion of whole categories of 3D marks.

As the JPO did not pursue an appeal of the IPHCJ decision to the Supreme Court of Japan, the IPHCJ decision is now final and conclusive. However, the ruling's long-term impact on the JPO notoriously difficult and rigid 3D trade mark examination guidelines remain to be seen. It is hoped that the Chocolaterie Guylian N.V. v Commissioner of Japan Patent Office 3D trade mark IPHCJ decision will herald a more sympathetic trade mark prosecution environment for brand owners seeking to register their 3D shape marks in the world's second-largest free market economy.

House of Lords addresses ‘Biogen insufficiency’

Authors: Paul Inman and Simon Spink (Howrey LLP)

Citation: Journal of Intellectual Property Law & Practice 2009 4(7):459-461; doi:10.1093/jiplp/jpp075

Generics (UK) Limited & Ors v H. Lundbeck A/S [2009] UKHL 12, 25 February 2009

In this decision, the House of Lords addressed its own earlier decision in Biogen v Medeva where the oft-cited principle of ‘Biogen insufficiency’ arose. As stated by Lord Walker in his opinion, ‘The distinction between product claims and process claims, especially in relation to the appropriate test for sufficiency, is at the heart of this appeal’.


Lundbeck's patent for escitalopram, a single enantiomer drug for the treatment of depression, claimed both the product itself and the method for its manufacture. Generics challenged the patent on grounds of novelty, obviousness, and insufficiency. At first instance ([2007] EWHC 1040 (Pat)), Kitchin J found that the enantiomer was both novel and inventive but that, by the priority date, enantiomers of known racemates were ‘obviously desirable goals’. He therefore followed the principle apparently laid down by Lord Hoffmann in the House of Lords in Biogen v Medeva, namely that ‘the first person to find a way of achieving an obviously desirable goal is not permitted to monopolise every other way of doing so’. To do so would exceed the ‘technical contribution’ to the art. On that basis, he found the claims to the enantiomer invalid for so-called ‘Biogen insufficiency’.

On appeal ([2008] EWCA Civ 311), Lord Hoffmann (unusually sitting in the Court of Appeal) held that Kitchin J had misinterpreted his judgment in Biogen which, he said, applied only to ‘product-by-process’ type claims and not to ‘simple product claims’ such as Lundbeck's claim. With Jacob LJ in agreement, the Court of Appeal overturned the finding of insufficiency.

In October last year, the Lords gave permission to Generics to appeal further. The Lords heard the appeal in January and gave their decision less than 6 weeks later.


The Lords' decision (lead judgment by Lord Neuberger) was unanimous in dismissing Generics' appeal and upholding the claims to the enantiomer.

The Lords agreed that when seeking to revoke a patent for ‘sufficiency’, in addition to considering the clarity and completeness of the specification (under the Patents Act 1977, section 14(3)), consideration must also be given to the ‘support’ given by that description for the claims (under section 14(5)(c)). As Lord Walker pointed out:

Section 14(3) and (5)(c) operate together, as EPC Articles 83 and 84 operate together, to spell out the need for an ‘enabling disclosure’, which is central to the law of patents.
Though section 14(5)(c) had been thought to be more relevant to the examination process than revocation proceedings, this judgment confirms the position in Asahi Kasei Kogyo KK's Application [1991] RPC 485, that section 14(5)(c) has a place in the assessment of sufficiency.

The Lords agreed (following the recent trend of the UK Patents Courts) that clear principles arising from the EPO and its boards of appeal should be adhered to in the UK. In this case, the principle laid down in the EPO's decision T409/91 EXXON/Fuel Oils [1994] (OJEPO 653) that ‘the monopoly to be granted to the patentee is to be assessed by reference to the ‘technical contribution’ made by the teaching of the patent', was key.

In the Court of Appeal, Lord Hoffmann had said that Kitchin J was mistaken in equating the ‘inventive concept’ of Lundbeck's patent (ie the process), with the ‘technical contribution’. What he should have found was that the novel and non-obvious enantiomer was itself the technical contribution.

The Lords' analysis of this section of Lord Hoffmann's speech, particularly on the part of Lord Walker, went somewhat further. Lord Walker considered how the two concepts, ‘inventive step’ and ‘technical contribution’, should be defined and distinguished. He suggested that the ‘inventive concept’ is concerned with the identification of the core of the invention, whereas the ‘technical contribution’ to the art is concerned with the evaluation of its inventive concept: how far forward has it carried the state of the art?

In assessing the technical contribution, Lord Walker indicated that regard should be to the ‘lasting strategic importance’ of the invention to the art. How this will be interpreted in future cases relating to sufficiency remains to be seen.

Perhaps surprisingly, the Lords also drew support from a line of EPO case law starting with Kawasaki Steel Corp [1994] OJEPO 695, which dealt with the issue of obviousness. In this decision, the Board of Appeal had concluded that:
an otherwise obvious entity, may become nevertheless non-obvious and claimable as such if there is no known way or applicable (analogy) method in the art to make it and the claimed methods for its preparation are therefore the first to achieve this in an inventive manner.
Although in none of these decisions of the Board was any consideration given to insufficiency, Lord Neuberger noted that the argument based on obviousness considered by the Board was very similar to the insufficiency reason given by Kitchin J. He concluded that ‘it is fanciful to suggest that, if the reason had been arguable, it would not have been raised before or by the Board by now’.

With those principles in mind, Lord Neuberger considered whether (leaving aside Biogen) there was anything in the legislation (either UK or EPC) which meant that Lundbeck's claim to its enantiomer should be held invalid for insufficiency, and concluded:
... the product claim in the present case is valid. I appreciate that this means that, by finding one method of making a product, a person can obtain a monopoly for that product. However, that applies to any product claim.
The remaining question was whether Lord Hoffmann's Biogen speech should make any difference. Although they accepted that certain sections of Biogen, if read out of context, could be construed to support Kitchin J's first instance finding, the Lords ultimately agreed that Biogen was concerned with a very complicated claim that was certainly not comparable with Lundbeck's simple product claim.

Lord Walker said:
Statements of general principle relating to inventions with many embodiments may be irrelevant to an invention which consists of a single chemical compound. ... That is in my opinion the fundamental reason why Biogen does not provide a direct answer to this appeal.
Lord Mance's view was:
... perhaps even more relevant in my view is the fact that nowhere in Biogen Inc. v. Medeva plc do the speeches treat or discuss the claim as a simple claim in respect of a novel product. ... It seems to me therefore that the Court of Appeal was not in the present case bound by the reasoning or result in Biogen Inc. v Medeva plc to arrive at a conclusion that the present claims 1 and 3 were invalid.
And Lord Neuberger said:
the opinion of Lord Hoffmann in Biogen [1997] RPC 1, though a tour de force as Lord Walker says, is of no assistance to the appellants in this case. It applied in the light of the very unusual nature of the claim in that case.
Thus, each of the Lords dismissed the appeal and found Lundbeck's patent claims to its simple enantiomer product sufficient, and therefore valid.

Practical significance

In upholding the Court of Appeal judgment, the House of Lords have confirmed that:

* the principles arising in Biogen do not apply to a simple product claim;
* if a product is novel and non-obvious, the product itself is the ‘technical contribution’ to the art;
* a product which is an ‘obviously desirable goal’ (such as an enantiomer) should not be treated any differently to other product claims. On the contrary, Lord Neuberger went as far as saying:
... where (as here) the product is a known desideratum, it can be said (as Lord Walker pointed out) that the invention is all the more creditable, as it is likely that there has been more competition than where the product has not been thought of.
This decision is good for the research-based pharmaceutical industry, whose business is often reliant on patent claims to simple pharmaceutical products. Further, by removing the threat of ‘Biogen insufficiency’ against such patents, UK patent law has become better aligned to Europe, providing patentees with greater cross-border certainty.

However, it does not provide comprehensive guidance as to the scope of application of Biogen, which remains House of Lords authority, so to some extent the spectre of ‘Biogen insufficiency’ still hangs over patentees. In the Court of Appeal, Lord Hoffmann indicated that the principles in Biogen only apply to the sort of claims then in issue, ie ‘product-by-process’ type claims. Lord Neuberger, however, suggested that the claim in Biogen was ‘almost a process-by-product-by-process claim’. Thus, while the reach of ‘Biogen insufficiency’ has certainly been considerably curtailed by the Lundbeck speeches, where the limits lie remains to be decided.

What is also less clear is the extent to which the concept of ‘lasting strategic importance’ of the invention will play in assessing the ‘technical contribution’ in the future.

It's my party and I'll cry if I want to

Author: Jeremy Phillips

Citation: Journal of Intellectual Property Law & Practice 2009 4: 451; doi:10.1093/jiplp/jpp087

It's my party and I'll cry if I want to

So run the lyrics of one of the defining songs of the early 1960s, sung by New York-born Lesley Gore and the subject of many cover versions. The party in question, a birthday party in which the singer recites her humiliation when boyfriend Johnny leaves her for another girl, Judy, is of course nothing to do with Sweden's Pirate Party, though it was in Sweden that the largest number of cover versions of that classic were recorded.

What is the Pirate Party and what does it stand for? Founded on 1 January 2006, it is the fourth-largest party in Sweden and has inspired or given rise to parties with similar names and objectives in Europe and worldwide. The party strives to reform laws regarding both copyright and patents, maintaining that issues such as the patentability of computer software are political rather than technical legal issues. It also supports a strengthening of the right to privacy, both online and in the real world, as well as greater transparency of government. While the prosecution and conviction of the Pirate Bay was an obvious focal point for the party's campaigning, it is less widely appreciated that, at the time of writing, the Pirate Parties of Sweden and Germany had made formal submissions to the European Patent Office concerning the referral of questions relating to software patents to the Enlarged Board of Appeal in Case G 3/08.

The Pirate Party is not the first movement in history to have been motivated by IP issues. The Luddites in nineteenth century England were concerned to prevent the introduction of innovative manufacturing machinery into the increasingly automated textile industry. There are, however, vast differences between them. While the Luddites were a popular movement, they were unable to engage with the political system from which they were disenfranchised, while the Pirate Party utilizes the regular political apparatus of state in order to harness the power of a mainly young, apparently apathetic, culturally aware sector of the electorate. Another difference is that, while the Luddites sought in vain to turn back the tide of new technology, the Pirate Party views innovation as a surging wave and seeks to ride its crest.

What is the proper response of the IP sector to the Pirate Party? Since it works within the law and seeks to amend the law by lawful means, calls to ban it are futile and misconceived. One can simply wait and hope that, in the fullness of time, those who demand the freedoms which IP restricts will grow up to own the rights which now they wish to attenuate. This too is a forlorn expectation, since the Pirate Party's constituency is a renewable resource: a new generation of young idealists will replace those who graduate to middle-class, middle-age stolidity. There is only one response: to engage the Pirate Party in dialogue and to match its every point with the counterpoint of a better argument.

Who will make this response, and when? It is difficult to debate the Pirate Party on account of its dual role as social movement and political party. It listens to, and derives its authority from, a community of file-sharers, music-lovers, film-watchers, and exponents of risk-free, easy, and enjoyable uses of digital works. Yet it speaks to, and discusses issues with, other political parties whose agendas are so much longer and more sophisticated that they fail to treat the Pirate Party seriously.

The message is therefore clear. If we do not support the Pirate Party's aims, we must engage it in debate and oust it from the moral high-ground which it currently seeks to occupy. We must explain why we need to restrict access to, and control the use of, digitally recorded works. We must prove that software patenting, within the existing limits or beyond them, are justified. If we cannot produce a better and more persuasive case, we deserve to lose the argument.