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.

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