IP NEWS:SOEI Patent & Law Firm

 Article 3(1) iii of the Japanese Trademark Laws says that trademarks which consist solely of a mark indicating in a common way the shape (including packaging shape) of the goods cannot be registered. However, if, as a result of the use, the consumers are able to recognize the goods or services as being connected with a certain person's business, such a trademark can be registered. (Art. 3(2))

 However, satisfying the requirements on the shape of the goods that can render the shape distinctive on the basis of use is so difficult that the shape of the goods or their packaging has rarely succeeded in gaining registration as a trademark.

 MINI MAGLITE flashlights are widely used and popular due to its aesthetic design all over the world. Nonetheless, the JPO once rejected an application to register the product configuration of the MINI MAGLITE flashlight as a three-dimensional trademark for the following reasons: the subject application relates to a shape of a commercial product (Art. 3(1)(iii)), and, despite its renown, the product is not recognized solely by its configuration because the flashlight also displays the name of the manufacturer, Mag Instrument Corporation, or the trademark, MINI MAGLITE, (Art. 3(2)).

 The applicant, Mag Instrument Corporation, the manufacturer and distributor of MINI MAGLITE flashlights, appealed the JPO’s trial decision to the Intellectual Property High Court.

2. The IP High Court’s Decision

 The IP High Court overturned the JPO’s decision, stating that the shape of the MINI MAGLITE flashlight has acquired distinctiveness as a result of use. “The consumers, who see a MINI MAGLITE flashlight for the first time, are not able to easily recognize it as being connected with Mag Instrument Corporation only from its shape,” the Court said.

 According to the Intellectual Property High Court, the reasons for this decision are as follows:

(1) The shape of the MINI MAGLITE flashlight has remained unchanged since its first sale in 1984 in the U.S.;
(2) Numerous MINI MAGLITE flashlights have been sold in Japan through as many as 2,700 retail shops since 1986 when the import sales began, and Mag Instrument Corporation had annual sales of over \500 million for MINI MAGLITE flashlights and many other products;
(3) Advertising and publicity for the MINI MAGLITE flashlight has emphasized the value of its design characteristics;
(4) Mag Instrument Corporation took legal action under the Law for the Repression of Unfair Competition Art. 2(1)(i) to obtain an injunction to stop sales of products manufactured by other companies having similar shapes, and no such goods have been sold since the legal action; and
(5) The trademarks “MINI MAGLITE” and “MAG INSTRUMENT” on the goods do not stand out because they are small relative compared to the overall dimensions of the goods.