KHMER SEMINAR

May 1, 2009

TRADEMARKABILITY
OF
THREE-DIMONSIONAL SHAPES

Presenter: KORK Boren

Moderator: NGIM Sokrachany
Getting Start:
„ Mark as a determinant of your decision
on purchasing one particular good?
„ E
Examples
l off your ffavorite
i marks?
k ?
„ Information conveyed by a mark?
„ Value of mark?
„ History of mark?
„ Mark or Brand?
Roles of mark: This BNS CAKEE is made
by BNS Confectionery
(Indication of source)

BNS CAKEE is absolutelyy

delicious (Guarantee of
BNS CAKEE quality)

Please buyy BNS CAKEE!

(Advertisement)
Legal
g protection
p of marks:

„ Legal instruments: Trademark Law, Unfair

Competition Law
„ Purpose of legal protection (maintenance of
p
business reputation, p
protection of consumers’ interests,
development of industry)
„ Rights
g g
granted upon
p registration
g
„ Length of protection: 10 years from the date
of registration of its establishment
(Renewable)
 Scope
p of legal
g p protection:
Right to
exclusively use

Similar marks
Right to exclude
Protection
By Unfair
others from using
Competition Registered Mark
Law

BNS

B&S
Requirements
q for legal
g protection:
p

„ Subject matters: Goods or Services

Requirements
q for legal
g protection:
p

„ Unregistrable marks:
„ Grounds for rejection:
1- Common name of the ggoods or service:

Hamburger

WATCH
2- Customary name of the good or service
3- Marks indicating a common way of origin, place
of sale, quality, material, price, shape of goods…

One Million Yen

SILK
Conventional types
yp of marks:

„ Characters

„ Figures

„ Signs
„ Combination of the above
Unconventional types
yp of marks:

„ Visible marks (Color marks, mark, 3D

marks Motion mark
marks)

„ Invisible marks ((Sound marks,, Olfactoryy

marks, Touch marks, Taste marks)
Examples:
p

„ Single color marks:

Registered in EU
Registered in the US
„ Combination of colors:

Registered in the US
„ Sound mark:

Registered in the US and EU

Protection under Unfair Competition Law – Japan:

Requirements:
„ Distinctiveness

„ Widely-known (Defendant Area)

„ Similarity
Si il it off marks
k
„ Confusion
 Example:
p
„ Sanyo It’s case, Osaka High Court, March 27, 1997, Unfair
Competition
p Prevention Law ((Article 2.1.1):
) Dark Blue is not
distinguishable

SANYO it’s TWINBIRD mi

Three-dimensional marks:
„ Pepper Mill (inherently distinctive)
„ Perfume (inherently distinctive)
Protection of 3D shapes
p as marks:

Requirements:
„ Inherent Distinctiveness

„ Functionality Test
‰ Utilitarian Functionality
F nctionalit
‰ Aesthetic Functionality
„ Acquired Distinctiveness (Secondary
Meaning)
g)
Court Decisions:

„ 23 cases as of 2008

‰ 1 case – Inherent distinctiveness

‰ 2 cases – Secondary meaning

‰ 20 cases - Rejected
GuyLian chocolate Case, IP High Court, June 30,
2008 – Inherently distinctive
Decisions:

„ Japan Patent Office – Rejected:

No inherent distinctiveness nor secondaryy
meaning
„ IP High Court – Inherent distinctiveness
‰ New design
‰ No similar design in the market
Mini Maglite Case, IP High Court, June 27, 2007 –
Secondary Meaning
Decisions:

„ Japan Patent Office – Rejected

No inherent distinctiveness nor secondaryy
meaning
„ IP High Court – Secondary Meaning
‰ No change of design since 1983
‰ Number of sales in a year in Japan: 600 000
‰ No similar design in the market
‰ Effective advertisement strengthening shape
Coca-Cola Case IP High Court, May 29, 2008 –
Secondary Meaning:
Decisions:

„ Japan Patent Office – Rejected

No inherent distinctiveness nor secondaryy
meaning
„ IP High Court – No inherent distinctiveness
- Utility and aesthetics enhancement of the
beverage container.
- Not go beyond the shape or configuration of goods
or a container thereof as represented in a normal
manner.
„ IP High Court – Secondary meaning admitted
‰ No changeg of design
g since 1957 in Japan
‰ No similar design in the market
‰ Total sales = 2,388 million bottles (peak in 1971)
‰ Number of sales in a year = 96 million bottles
‰ Effective advertisement strengthening shape
‰ Consumer survey: 60-80 percent recognition
Rejected
j 3D shapes:
p
Arguments against Legal Protection of 3D
shapes as mark:
„ Lack of distinctiveness (Functionality)

„ Overlapping scope of protection (Trademark

Vs Industrial Design)
Vs.

„ Shrinking of the Public Domain

Counter Arguments
g to Prof. Khoury’s:
y
„ Scrutiny
Sc u y ofo judges a
and
deexaminers
a e s – Analogy
a ogy o
of
3D shapes with conventional marks
„ 3 acto
actors
s in tthe
e ttrademark
ade a sce
scenery
e y – Trademark
ade a
owner, competitor and consumer
„ Analogy of IP with real property – free riding
concept
„ Double protection
p
„ Analogy of trademark with other fields of IP
„ Shapes of the public domain
„ Shadow test