Intellectual Property High Court of Japan (Third Division) [2020]: Case No. 2020 (Gyo-Ke) 10076
This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.
Session 6: Rules of Evidence in Intellectual Property Litigation
Intellectual Property High Court of Japan (Third Division) [2020]: Case No. 2020 (Gyo-Ke) 10076
Date of judgment: December 15, 2020
Issuing authority: Intellectual Property High Court of Japan
Level of the issuing authority: First instance
Type of procedure: Judicial (Civin( �/span>
Subject matter: Trademarks
Plaintiff: Ebara Foods Industry, Inc.
Defendant: Commissioner of the Japan Patent Office
Keywords: Questionnaire, Survey evidence, Position trademark
Basic facts: Article 3, paragraph (1), item (iii) of the Trademark Act provides that registration cannot be granted for a trademark that consists solely of a mark indicating shape, including shape of packaging, in a common manner. At the same time, Article 3, paragraph (2) of the Trademark Act provides that a trademark that falls under item (iii) of paragraph (1) may be registered if, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to the business of a particular person.
Plaintiff filed an application for registration of a position trademark consisting of three-dimensional shapes placed on a container of a product, in a position from slightly above the middle of a body part of the container to a neck part, with the designated goods of “SAUCES FOR BARBECUED MEAT”.
The Japan Patent Office (JPO) issued a decision of refusal. The JPO held that the applied-for trademark consisted solely of a mark indicating, in a common manner, the shape of a package of a product, and that the trademark did not qualify for the exception established in Article 3, paragraph (2) of the Trademark Act (relating to consumer recognition arising from trademark use).
Plaintiff filed an appeal against the decision of refusal, and the JPO dismissed the appeal. Plaintiff filed a lawsuit to seek revocation of the decision by the JPO. Plaintiff submitted the results of a questionnaire as evidence intended to prove that, as a result of its use, the applied-for trademark could be recognized by customers as goods pertaining to the business of Plaintiff.
Held: The Intellectual Property High Court held that there was no error with the JPO decision of refusal. Accordingly, the Court dismissed Plaintiff’s claim.
Relevant holdings in relation to rules of evidence in intellectual property litigation [specifically, survey evidence in trademark cases]: The Court held that the results of the questionnaire could not be weighed heavily in determining whether or not the three-dimensional shapes constituting the applied-for trademark served a function of identification. In reaching this conclusion, the Court found that the questionnaire could not be considered reasonable in respect to the selection of containers used for comparison with the container of a product bearing the applied-for trademark. The Court noted that “the container of the Product Bearing Applied Trademark has features that are different from the containers of other products, which were used for comparison, thereby giving a different impression.” As such, the Court found it “considerably likely” that the questionnaire respondents identified the bottle based on the impression given by the container as a whole, rather than based on the three-dimensional shapes constituting the applied-for trademark.
Relevant legislation:
Article 3, paragraph (1), item (iii), and Article 3, paragraph (2) of the Trademark Act of Japan
Article 247 of the Code of Civil Procedure of Japan