About | HeinOnline Law Journal Library | HeinOnline Law Journal Library | HeinOnline

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

What Is HeinOnline?

HeinOnline is a subscription-based resource containing thousands of academic and legal journals from inception; complete coverage of government documents such as U.S. Statutes at Large, U.S. Code, Federal Register, Code of Federal Regulations, U.S. Reports, and much more. Documents are image-based, fully searchable PDFs with the authority of print combined with the accessibility of a user-friendly and powerful database. For more information, request a quote or trial for your organization below.



Short-term subscription options include 24 hours, 48 hours, or 1 week to HeinOnline.

Contact us for annual subscription options:

Already a HeinOnline Subscriber?

profiles profiles most