Shape of Coca-Cola bottle registered as three-dimensional mark

The IP High Court has reversed a decision of the Patent Office in which the latter had rejected the registration of the shape of the Coca-Cola bottle as a three-dimensional trademark (May 29 2008).
The three-dimensional trademark system was introduced on April 1 1997 by an amendment to the Trademark Law (68/1996) and is defined in Article 2(1) of the law. A June 2007 decision involving the MINI MAGLITE trademark was the first in which the court applied the provisions of Article 3(2) of Law 127/1959 (notwithstanding the provisions of Article 3(1)(3)) in respect of a trademark consisting of the three-dimensional shape of a product.
On July 2 2003 The Coca-Cola Company, which manufactures and sells the well-known cola drink in the United States and elsewhere, filed an application with the Patent Office to register the shape of its bottle as a three-dimensional trademark for "beer, refreshing beverages, fruit juice beverages, extracts of hops for making beer, whey beverages and vegetable juice beverages".
The examiner issued a notice of rejection on October 22 2004. Coca-Cola filed a petition for a trial hearing on January 31 2005. After filing the petition, Coca-Cola amended the designation of the goods to “cola drinks” in Class 32 of the Nice Classification.
On February 6 2007 the office affirmed the original rejection and dismissed Coca-Cola’s petition for a trial hearing. It reasoned that the trademark in question consisted solely of a mark indicating in a common way the shape of the goods or their packaging. Therefore, the mark could not be registered under Article 3(1)(3) of the law. In addition, the office found that the trademark could not be said to have acquired distinctiveness and thus did not satisfy the requirements of Article 3(2).
Coca-Cola appealed to the IP High Court on June 15 2007.
Considering the applicability of Article 3(1)(3), the court found as follows:
  • In the case of a trademark consisting solely of the three-dimensional shape of goods that is indispensable to secure the function of such goods, Article 4(1)(18) provides that registration cannot be obtained; thus, the question of the applicability of Article 3(2) was avoided. It is understood that a three-dimensional shape that is indispensable to securing the function of the goods should not be monopolized.
  • Even if selected for the purpose of effectively promoting the function and aesthetic qualities of the goods in question, a shape that is not considered indispensable to securing the function of the goods - if used as a mark distinguishing goods and services from others by indicating their origin - may be registered as a three-dimensional trademark. No additional obstacle to trademark registration exists if the shape has acquired distinctiveness through use.
  • A shape is often adopted to facilitate the function or aesthetic qualities of goods. It is appropriate to determine that a shape adopted for this purpose, in the absence of special circumstances, should fall under Article 3(1)(3). 
  • A shape which might reasonably be considered to have been chosen for functional reasons or for its aesthetic qualities should fall under Article 3(1)(3) as a shape facilitating the function or aesthetic qualities of the goods in question, even if such a shape has special features.
  • A shape which is novel and unpredictable from the consumer's viewpoint, but has been selected exclusively with the aim of facilitating the function of the goods, should be deemed to fall under Article 3(1)(3) in view of the meaning of Article 4(1)(18).
  • In view of its special features, the shape of the Coca-Cola bottles was recognized as having been adopted to promote the function or aesthetic qualities of the cola drink container when considered objectively at the time of the trial decision (ie, February 6 2007), and was thus considered to fall within the scope of designs which consumers might expect for a cola drink container.
  • Therefore, the office had not erred in ruling that the trademark applied for consisted solely of a mark using the shape of the goods in a common way.
Considering the applicability of Article 3(2), the court held as follows:
  • Article 3(2) of the law provides that a trademark which is considered to consist solely of a mark indicating the shape of goods in a common way under Article 3(1)(3) can be registered if it has acquired distinctiveness through use, except in the case of a trademark consisting solely of a three-dimensional shape that is indispensable to secure the function of the goods under Article 4(1)(18).
  • In determining whether a trademark consisting of the three-dimensional shape of goods has acquired distinctiveness, a court should consider various factors, including:  

    • the shape of the trademark and the goods;
    • the time at which the trademark's use began;
    • the duration of its use and the territory in which it has been used;
    • the total sales of the goods;
    • the duration, area and level of sales promotion; and
    • the existence of other products of a similar shape.
  • However, a court should not consider that such a trademark cannot acquire distinctiveness merely because the company's name, symbol or lettering is attached to the three-dimensional shape of the goods in use or because the shape has been slightly modified. It should determine whether the shape has independently acquired distinctiveness as an indication of the source of the goods by reviewing various factors, such as whether it is attractive to consumers and gives them a strong impression in spite of the attachment of the name or mark to the goods in use, or in spite of a slight modification to the shape.
Therefore, with regard to the shape of the Coca-Cola bottle, the court found as follows:
  • Coca-Cola uses a bottle which is almost identical in shape to the returnable glass bottle launched in the United States in 1916. The shape has obtained a reputation through its uniqueness and specificity from the time of its launch. In Japan, the shape of Coco-Cola's returnable bottle has not changed since its launch in 1957.
  • Sales of Coca-Cola's product in returnable bottles have been remarkable since the product's launch. In 1971 around 2.38 billion bottles were sold worldwide. Although sales of the drink in cans and plastic bottles now account for a larger proportion of total sales, 96 million returnable bottles are sold annually. 
  • On the question of the promotion of Coca-Cola's product in the returnable bottle, a budget of approximately Y3 billion has been invested annually since 1997. This figure covers only the company's media expenses; in addition, advertisements in which the shape of the bottle can be considered to make an impression on consumers have appeared on television, as well as in newspapers and magazines. As the share of sales in cans and plastic bottles has increased, the shape of the returnable bottle has been deliberately shown or published in advertisements as a distinctive mark to indicate the source of the drink.
  • In a survey in which participants were shown a clear container with a three-dimensional shape identical to the trademark in question, between 60% and 80% of the participants identified the shape as originating from Coca-Cola.
  • A significant number of experts consider the returnable bottle to be a typical example of a shape showing distinctiveness and indicating the source of the goods. Many books have been published on the history and specific shape of the bottle.
  • No products on the beverages market are sold in a container with the same special features as the three-dimensional shape of Coca-Cola's returnable bottle. The plaintiff has taken a tough position and sought injunctions against the use of containers having a shape similar to the returnable bottle or use of the outline of containers with the same features as the returnable bottle.
  • The shape of the bottle has been recognized as a brand symbol.
In view of the above, the court acknowledged that Coca-Cola's returnable bottle has obtained remarkable sales results and kept the same shape since its launch in Japan in 1957. Moreover, the product's sales have been sustained over a long period and promotions focusing on the special features of the shape have been repeated. Thus, the court determined that the shape had come to be recognized among consumers as a mark distinguishable from others’ products by the time of the trial decision at the latest.
In connection with the designation 'Coca-Cola' on the bottle and the advertisement thereon, the court held that the bottle was strongly distinctive as an indication of the source of the goods. Thus, the designation did not preclude recognition of the shape’s distinctiveness for the purpose of the application.
The court also noted the difference in the shape of the top of the bottle - the three-dimensional shape of the returnable bottle is made to fit a crown cap, whereas the trademark under consideration shows a bottle made to fit a screw cap. However, in view of the bottle's strong distinctiveness, the court found that the difference would not constitute an obstacle to the recognition of the shape’s distinctiveness as an indication of the source of the goods. Therefore, the court concluded that the office had erred in ruling that the trademark did not fall under Article 3(2) of the law.
This is the second case in which the court has applied the provisions of Article 3(2) to a three-dimensional trademark. The two cases are now deemed to have established the criteria for determining the registrability of a three-dimensional trademark (if used with word marks).
The conclusions drawn from the decisions in these two cases have generally been accepted by legal experts and by the companies, as the cases involved famous three-dimensional trademarks representing the Mini Maglite flashlight and the Coca-Cola bottle. However, the decisions are unlikely to prompt a sudden increase in court approvals of registrations of three-dimensional trademarks, as the two cases imposed strict requirements on the applicants in respect of Article 3(2).
Eiichi Fukushima, Nishimura & Asahi, Tokyo

Unlock unlimited access to all WTR content