Shape of Guylian chocolates registered as 3D mark

The IP High Court has allowed the registration of the shape of a product as a three-dimensional trademark without requiring evidence of distinctiveness acquired through use (Case 2007 (Gyo-Ke) 10293, June 30 2008).

In 2003 Guylian, the Belgian confectionery manufacturer, applied to the Japanese Patent Office (JPO) for the registration of a three-dimensional trademark (consisting of four shell-shaped chocolates) for "chocolate and pralines" in Class 30 of the Nice Classification

The JPO examiner rejected the application and Guylian appealed. The JPO dismissed the appeal, holding that the mark was not registrable on the grounds that it:
  • consisted "solely of a mark indicating, in a common manner, the quality, efficacy, quantity and shape of goods";
  • was not inherently distinctive; and
  • had not acquired distinctiveness.
Guylian appealed to the IP High Court.
The IP High Court cancelled the decision of the JPO, holding that the trademark was not a mark indicating the "quality, efficacy, quantity and shape of goods". The court stated that such a mark presents the following two characteristics:
  • Unsuitability for monopoly - many people may wish to use the mark because it is appropriate to their trade. Therefore, in the public interest, no one should be granted a monopoly over its use.
  • Lack of distinctiveness - the mark is generally used and, consequently, lacks distinctiveness and cannot function as a trademark.
The court held that the trademark at issue did not have these two characteristics. With regard to the first element, the court concluded that as Guylian had adopted its shell-shaped trademark in 1958 and no other manufacturer appeared to have adopted a similar trademark since, the mark was not of a type that other traders would wish to use. With regard to the second element, the court concluded that the trademark was sufficiently distinctive, taking into account:
  • the four different shell designs, as well as their combination and arrangement;
  • the marbled colour; and
  • the absence of any evidence of identical or similar marks.
The court added that, although a manufacturer chooses the shape of a product mainly on the basis of function and visual attractiveness, it is obvious that shape plays a role when consumers choose a product and that the manufacturer has this in mind when creating a product. Therefore, it is not appropriate to make a sweeping judgment that a shape trademark is not distinctive purely because it is a feature of the product. The court thus rejected the JPO's claim that a three-dimensional mark consisting solely of the shape of the product will lack distinctiveness if it is recognized as generally suitable for use as a shape of the product.
This decision is notable because, without considering whether the mark had acquired distinctiveness through use, the court held that the mark itself was distinctive. Previous decisions on the registrability of three-dimensional marks relating to the shape of goods or their packaging have generally followed the principle that when a product's shape contributes to its function or appeal, a three-dimensional mark of that shape is a mark indicating the "quality, efficacy, quantity and shape of goods" and is not distinctive. The mark will be registrable only if there is evidence that it has acquired distinctiveness (eg, see "Shape of Coca-Cola bottle registered as three-dimensional mark"). That principle was based on the interrelationship between the patent, design and trademark laws - functional and attractive shapes being protected by patents and designs respectively, and not by registered trademarks.
In the present case, the court did not even refer to the relationship between rules for three-dimensional trademarks and the patent and design laws. It stated that if shapes not relating to the function or the sense of beauty of the product were the only shapes that could be distinctive, this would overly limit the significance of the existence of the rules for three-dimensional trademarks.
As the decision was not appealed, it is uncertain how the JPO will apply the rules on the registrability of three-dimensional marks in the future. However, this judgment implies that the rule relating to marks indicating the "quality, efficacy, quantity and shape of goods", which has traditionally been an obstacle for registration of three-dimensional marks, may now be interpreted in a different way.
Hirotaka Noguchi, Lovells LLP, Tokyo

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