In its review of the Japan Patent Office (JPO)'s decision in The Coca Cola Company v. Japan atent Office (IP High Ct., May 29, 2008), the IP High Court overruled the JPO's rejection of Coca Cola's application to register the shape of its  returnable bottle, and held that Coca Cola's eturnable bottle shape would be registered and protected as a three-dimensional (3D) trademark. 3D trademarks were introduced into the Japanese rademark Act in 1996. 3D trademarks had also been protected by the Unfair Competition Prevention Act, but only if they were famous. In he Coca Cola case, the court found on the facts that Coca Cola's returnable bottle shape had acquired distinctiveness through Coca Cola’s use.
These facts include: (i) the Coca-Cola returnable bottle shape's long history in Japan (since 1963), (ii) its good sales performance, (iii) the large investment made on advertising it; (iv) survey results which showed that it was discriminating (i.e., 60% to 80% of examinees identified ncolored and unlabeled glass bottles of that shape as Coca Cola products); and (v) that the plaintiff had used it exclusively for many years.

This opinion should be a good precedent for how a 3D mark can be found by the Court to have  acquired distinctiveness, because bottle shape had not been found distinctive in the past two precedents, i.e. Yakulto Honsha Co. Ltd v. JPO (Tokyo High Ct., Jul. 17, 2001)[milky drinks bottle] and Suntory Co., Ltd. v. JPO (Tokyo High Ct., Aug. 29, 2003) [whisky bottle].

(By Naoki Iguchi)

 Anderson Mori & Tomotsune Japan IP Newsletter