\n| Defendant\u2019s mark<\/span><\/td>\n | ![\"lamp](\"http:\/\/clarivate.com\/wp-content\/uploads\/sites\/5\/2019\/12\/lanp-shade-r.jpg\") <\/p>\n* Cited from \u201clist of Defendant\u2019s mark\u201d in Attachment 3 of the Judgment<\/span><\/td>\n<\/tr>\n\n| Defendant\u2019s product<\/span><\/td>\n | Lighting apparatus<\/span><\/td>\n<\/tr>\n<\/tbody>\n<\/table>\n <\/p>\n 4. Prosecution history of Plaintiff\u2019s trademark<\/h4>\nPlaintiff filed their trademark application (\u201cPlaintiff\u2019s trademark\u201d) on December 13, 2013. During the examination stage, JPO issued a Decision of Refusal based on lack of distinctiveness (Article 3, Section 1, Paragraph 3 of the Trademark Law) in connection with the trademark application.
\nPlaintiff filed an appeal against examiner\u2019s decision of refusal. The Administrative Judges has found that, although Plaintiff\u2019s trademark merely indicates the shape of the product in a manner used commonly, and does not have inherent distinctiveness, the consumers and distributors have come to realize that the three-dimensional shape that is substantially identical to the three-dimensional trademark according to Plaintiff\u2019s trademark is a product pertaining to the business of the Applicant, since Plaintiff has used such three-dimensional shape in Japan for more than 40 years, and granted registration of Plaintiff\u2019s trademark (\u4e0d\u670d 2015-764 (darts-273-581-D-ja<\/a>)).
\nThe goods designated in Plaintiff\u2019s trademark at the time of filing included numerous products, such as \u201clighting apparatus and accessories thereof; lighting installations; electric lamps\u201d. However, the designated goods has been amended to \u201clamp shades\u201d, concurrently with the submission of the Written Argument against the Notification of Reasons for Refusal at the examination stage.<\/p>\n5. Major actions by Defendant<\/h4>\nDefendant has imported Defendant\u2019s product from China, and sold the same via websites.<\/p>\n 6. Major issues<\/h4>\n(1) Similarity of trademark (whether or not Plaintiff\u2019s trademark is identical to Defendant\u2019s mark)
\n(2) Similarity of goods (whether or not the designated goods of Plaintiff\u2019s trademark, i.e. \u201clamp shades\u201d, are similar to Defendant\u2019s product \u201clighting apparatus\u201d)
\n(3) Grounds for invalidation (whether or not there are grounds for invalidation in Plaintiff\u2019s trademark)<\/p>\n <\/p>\n 7. Outline of court judgment on each issue<\/h4>\n \n\n\n| Issue<\/span><\/td>\n | Plaintiff\u2019s claims<\/span><\/td>\n | Defendant\u2019s claims<\/span><\/td>\n | Court judgement<\/span><\/td>\n<\/tr>\n\n| Similarity of trademark<\/span><\/td>\n | –\u00a0Constituent elements of Defendant\u2019s mark\u00a0are identical to constituent elements of Plaintiff\u2019s trademark.<\/span><\/td>\n | –\u00a0Deny or contest (without giving specific argument).<\/span><\/td>\n | Conclusion: \u00a0identical<\/span><\/p>\n –\u00a0Appearances are identical, and there is no difference in concept and sound between the two.<\/span><\/p>\n–\u00a0Even if Defendant emphasized that Plaintiff\u2019s products are the genuine product when selling Defendant\u2019s product, or sold Defendant\u2019s product at a price lower than that of Plaintiff\u2019s product, it will not constitute actual state of transaction that would deny the likelihood of deception or confusion as to the origin of goods.<\/span><\/td>\n<\/tr>\n\n| Similarity of goods<\/span><\/td>\n | –\u00a0Range of users is identical.<\/span><\/p>\n –\u00a0The two fall under the relationship of finished goods and parts thereof.<\/span><\/p>\n=>\u00a0\u201cLamp shades\u201d\u00a0and \u201clighting apparatus\u201d\u00a0are similar to each other.<\/span><\/td>\n | –\u00a0\u00a0Since designated goods of Plaintiff\u2019s trademark has been amended to \u201clamp shades\u201d, the scope of Plaintiff\u2019s trademark\u00a0does not cover \u201clighting apparatus\u201d.<\/span><\/td>\n | Conclusion: \u00a0Similar<\/span><\/p>\n –\u00a0Lamp shades\u00a0and lighting apparatus\u00a0share retail stores, point of sales, and users.<\/span><\/p>\n–\u00a0There is no intended end-usage of lamp shades other than for lighting apparatus.<\/span><\/p>\n=>\u00a0The two have very strong relationship as a product.<\/span><\/td>\n<\/tr>\n\n| Grounds for invalidation<\/span><\/td>\n | [Distinctiveness (Article 3, Section 1, Paragraph 3 of the Trademark Law)]<\/span><\/p>\n –\u00a0Continued sales of Plaintiff\u2019s product for more than 40 years, with a sales volume of 74,627\u00a0products.<\/span><\/p>\n–\u00a0Catalogues with Plaintiff\u2019s products posted are being distributed nationwide.<\/span><\/p>\n–\u00a0Plaintiff\u2019s product has been awarded a Good Design Award.<\/span><\/td>\n | –\u00a0Plaintiff\u2019s trademark\u00a0merely indicates one shape that could be adopted as a lamp shades.<\/span><\/p>\n –\u00a0Sales volume of Plaintiff\u2019s product occupies only 0.04% of overall sales volume of lighting apparatus.<\/span><\/p>\n–\u00a0Users recognize the product name \u201cPH5\u201d\u00a0as the distinguishing sign, and Plaintiff\u2019s trademark\u00a0remains to be a shape of the product.<\/span><\/td>\n | Conclusion: \u00a0It is found that Plaintiff\u2019s trademark\u00a0has acquired distinctiveness through use\u00a0(Article 3, Section 2 of the Trademark Law).<\/span><\/td>\n<\/tr>\n\n| [Violation of public order and morality (Article 4, Section 1, Paragraph 7 of the Trademark Law)]<\/span><\/p>\n –\u00a0Plaintiff\u00a0have been giving warnings to infringers of Plaintiff\u2019s trademark to refrain from continuing \u00a0infringing activities, whenever an infringer is found, \u00a0and have been continuing their effort in maintaining their brand value.<\/span><\/td>\n | –\u00a0Plaintiff has violated public order and morality, since Plaintiff obtained Plaintiff\u2019s trademark in order to conduct obstruction of business, such as suspension of import of Defendant\u2019s product.<\/span><\/td>\n | Conclusion: \u00a0Plaintiff\u2019s trademark does not violate public order and morality.<\/span><\/p>\n –\u00a0There is nothing unreasonable or unjustifiable by Plaintiff in obtaining trademark registration on Plaintiff\u2019s trademark, and seeking suspension of import of Defendant\u2019s product, which is a counterfeit product of Plaintiff\u2019s product.<\/span><\/td>\n<\/tr>\n\n| [Three-dimensional shape indispensable in securing its function (Article 4, Section 1, Paragraph 18 of the Trademark Law)]<\/span><\/p>\n –\u00a0The structure of lamp shades for achieving the function insisted by Defendant is not limited to Plaintiff\u2019s trademark, and numerous possibilities exist.<\/span><\/td>\n | –\u00a0Plaintiff\u2019s trademark\u00a0is a three-dimensional shape indispensable in securing the function of maintaining brightness that makes it possible to clearly recognize faces of person in the surroundings, and of eliminating discomfort given by the glare of the light source almost completely.<\/span><\/td>\n | Conclusion: \u00a0Plaintiff\u2019s trademark is not a three-dimensional shape indispensable in securing its function.<\/span><\/p>\n –\u00a0Numerous possibilities exists in the shape of the lamp shades, such as the number of shades.<\/span><\/p>\n–\u00a0The structure for achieving the function insisted by Defendant is not limited to Plaintiff\u2019s trademark.<\/span><\/td>\n<\/tr>\n<\/tbody>\n<\/table>\nThe court has decided on each of the issues as listed above, and has found the actions of Defendant to be trademark infringement activities. The court has ordered Defendant to suspend the manufacture, import, and sales of Defendant\u2019s product, and to pay approximately 4.41 million Japanese yen as damages.<\/p>\n 8. Comments<\/h4>\nOn the basis of the three-dimensional trademark related to a shape of a product, the present judgment has suspended the activities of another company selling products with identical shapes.
\nThe three-dimensional trademark system was introduced to Japan in 1997. In general, the shape itself of a product or a packaging container that does not have inherent distinctiveness may be granted protection, on condition that it has acquired distinctiveness through use (Article 3, Section 2 of the Trademark Law).
\nLikewise, Plaintiff\u2019s trademark has been refused during the prosecution stage. Registration was granted in the appeal against examiner\u2019s decision of refusal, since it was found during appeal stage that Plaintiff\u2019s trademark has acquired distinctiveness through use.
\nThe Hermes Burkin Bag case was the first-ever infringement case in which the similarity of a three-dimensional trademark that does not contain elements such as characters and figures has been contested (Tokyo District Court, May 21, 2014, \u5e73\u621025(\u30ef)31446 (darts-673-677-B-ja<\/a>)). The present case must be the second in history.
\nIn the Hermes Burkin Bag case, the court has made consideration on the similarity in the appearance of the image that is reflected in the visual perception of the viewer seeing the product from a predetermined direction. However, there was no such consideration made in the present judgment. The court has found that Defendant\u2019s mark is identical to Plaintiff\u2019s trademark, on the basis of the comparison of each element constituting the three-dimensional trademark. This conclusion may have been given based on the fact that the Defendant\u2019s product has almost identical shape with Plaintiff\u2019s product (Plaintiff\u2019s trademark), since Defendant\u2019s product has been sold claiming that it is a replica furniture of Plaintiff\u2019s product.
\nNow, the shape of the product itself is subject to industrial design registration, if it has novelty. When registered, the owner may enjoy exclusive right on the shape of the product, during duration of the industrial design right.
\nOn the other hand, the fundamental rule is that, when the industrial design right expires, the shape of the product that had been protected thereby becomes a public domain, and may be used freely by anyone.
\nAs such, specifically in the field of furniture, there are numerous products in the market called replica furniture imitating the shapes of famous furniture that are outside the protection provided by industrial design rights.
\nAs a case that sought injunction and compensation of damages for furniture with no protection by industrial design right, there was a case where the plaintiff filed a lawsuit based on copyright infringement of a baby chair (\u201cTRIPP TRAPP\u201d chair shape imitation case, IP high court, judgment dated April 14, 2015,\u5e73\u621026(\u30cd)10063(darts-578-722-C-ja<\/a>)). The present case sought protection of product shape based on the Trademark Law, and has opened the gateway for a new approach that could be taken against replica furniture.
\nIn order to obtain trademark right, the three-dimensional trademark related to a product shape must establish acquisition of distinctiveness through use. Further, the other party may claim invalidity for lack of distinctiveness in the infringement lawsuit, or may separately file a trail for invalidation.
\nIn fact, it has been necessary for Plaintiff to establish well-known status of Plaintiff\u2019s trademark during prosecution. Defendant claimed invalidity of Plaintiff\u2019s trademark during trial, and further filed a separate trial for invalidation against Plaintiff\u2019s trademark.
\nTherefore, we cannot say that trademark right on three-dimensional trademark related to a product shape may be obtained and maintained easily.
\nHowever, if the trademark right is successfully obtained, the trademark owner can enjoy semi-permanent exclusivity, by managing such product shape to remain clearly separated from shapes that are used commonly. In addition, a registered trademark has an advantage in that it cannot be contested with grounds for invalidation such as distinctiveness, after five (5) years from registration (Article 47, Section 1 of the Trademark Law).
\nIn the trial for invalidation against Plaintiff\u2019s trademark mentioned above, a decision finding that there are no grounds for invalidation in Plaintiff\u2019s trademark has been given. Defendant has subsequently filed a litigation requesting cancellation of the trial decision, however, the court has found that there are no grounds for invalidation in Plaintiff\u2019s trademark, similarly to the decision given by the court with respect to the claim of invalidity made by Defendant in the present case (Tokyo District Court, judgment dated November 26, 2019, \u4ee4\u548c1(\u884c\u30b1)10086(darts-640-043-H-ja<\/a>)). In that case, if five (5) years lapse from registration of Plaintiff\u2019s trademark, then Plaintiff should be able to obtain semi-permanent exclusivity on the lamp shades having such shape.
\nAs have been explained above, the present judgment may be regarded as a judgment that revealed the effectiveness of the three-dimensional trademark in the field of furniture as a countermeasure against replica furniture.<\/p>\n","protected":false},"excerpt":{"rendered":"In February 2016, a lighting manufacturer, Louis Poulsen, has acquired trademark right on three-dimensional trademark with respect to the shape of their lighting titled \u201cPH5\u201d. This lighting \u201cPH5\u201d was designed by a lighting designer, Paul Henningsen (1894-1967).The present case was brought before Tokyo District Court by Louis Poulsen, based on the above-identified trademark right, against a company manufacturing and selling replica furniture, to seek an injunction and compensation for damages.The court has found that the defendant has infringed trademark of the plaintiff, and granted injunction of the replica furniture and compensation for damages.<\/p>\n","protected":false},"author":164,"featured_media":6518,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"footnotes":""},"categories":[1],"tags":[486],"class_list":["post-6515","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-uncategorized","tag-darts-ip"],"acf":[],"lang":"en","translations":{"en":6515},"publishpress_future_workflow_manual_trigger":{"enabledWorkflows":[]},"pll_sync_post":[],"_links":{"self":[{"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/posts\/6515","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/users\/164"}],"replies":[{"embeddable":true,"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/comments?post=6515"}],"version-history":[{"count":2,"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/posts\/6515\/revisions"}],"predecessor-version":[{"id":265450,"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/posts\/6515\/revisions\/265450"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/"}],"wp:attachment":[{"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/media?parent=6515"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/categories?post=6515"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/tags?post=6515"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}} | | | | | | | |
![\"lamp](\"http:\/\/clarivate.com\/wp-content\/uploads\/sites\/5\/2019\/12\/lanp-shade-l.jpg\")
<\/p>\n