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No. 181 Managing Intell. Prop. 10 (2008)
Coca-Cola Bottle Ruling Opens Door to 3D Marks in Japan

handle is hein.journals/manintpr181 and id is 10 raw text is: - NEWS Peter Oilier, Hong Kong Coca-Cola bottle ruling opens door to 3D marks in Japan A court in Japan has recognized Coca-Cola's contour bottle as dis- tinctive in a decision that could force the Japan Patent Office (JPO) to relax its guidelines for registering three- dimensional trade marks. Judge Toshiaki limura of Japan's IP High Court ruled on May 29 that Coca-Cola's contour bottle was distinc- tive, even without the Coca-Cola trade mark displayed on it. The JPO should think about amending their practice guidelines, if this case is confirmed, Kozo Yabe, a partner of Yuasa & Hara - the firm that advised Coca-Cola in its application - told Managing IP. Dan Greif, trade mark counsel for Coca-Cola Pacific Group, said that the JPO has now said that it will not appeal the decision. It will now have to reconsider Coca-Cola's application and, assuming it does not find a different fault, register the trade mark. This would make Coca-Cola's contour bottle the first successful trade mark applica- tion for the shape of a bottle in Japan. Greif highlighted two important parts of the decision. First, the judgment stated that, because bottles are used to display many different marks and logos, it is not fair to deny that the shape of the goods has acquired secondary mean- ing just because a word mark is used in association with the shape. It would be very difficult for 3D trade marks to be registered if this analysis had not taken place, Greif told Managing IP. Second, the Court said that because minor changes are frequently made to the size and configuration of goods, it is not right to deny a registration because the shape of goods used is slightly differ- ent from the shape applied for. The JPO had used both those arguments when initially rejecting Coca-Cola's applica- tion, which the company first filed in July 2003. Coca-Cola appealed to the IP High Court, which held two hearings into the case in January this year. Greif said that the Court gave four main reasons for recognizing the distinc- tiveness of the contour bottle: the bottle had been sold extensively in Japan; it was used as a brand symbol in advertis- ing in Japan; surveys showed that con- It would be very difficult for 3D trade marks to be registered if this analysis had not taken place sumers recognized the origin of the con- tour bottle without any logo; and expert witnesses testified that the bottle was an example of a 3D trade mark. The JPO has traditionally been reluc- tant to register 3D trade marks. The most high-profile failure involved Suntory Whisky's application for its bottle shape. In 2003, the Tokyo High Court found no acquired distinctiveness in the company's unusual square bottle, in part because the word mark Suntory Whisky is printed on the bottle's label. Yakult also failed to register the shape of its bottles as a trade mark. Last year the IP High Court over- turned a JPO decision and recognized the Mini Maglite torch as a 3D trade mark , though Maglite's case was helped by a previous court victory against lookalike torches using Japan's unfair competition law. E 1 Owww.managingip.com 10 July/August 2008

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