Counterfeit products may sometimes imitate the packaging of products, in particular, the color and shape of products. Such products are often manufactured and sold by changing the main brand trademark (word/device mark) to a different trademark to avoid enforcement of the main brand trademark rights. However, it is difficult in practice to obtain trademark rights for only colors per se or three-dimensional shapes without the main brand’s word mark or device marks. This article will explain how to prevent the imitation of colors and shapes in such cases with reference to recent court precedents.

 

1. Color trademark protection in Japan

Despite the introduction of protection for new types of trademarks in the 2015 amendments to the Trademark Law, there have been no trademark registrations which consist of only a single color per se. There are also only a few trademark registrations that consist of two colors at present. The court and the JPO seem to take a conservative approach towards giving exclusive rights to color per se trademarks. On the other hand, in a recent Unfair Competition Prevention Law case, the court approved protection for a color composed of two colors (Dr. Martin Case) even though they denied protection for a single color per se (Louboutin Case).

 

(1) Dr. Martin shoe case (Tokyo District Court Judgement, March 24, 2023. Case No. R2(wa)31524)

 

The Tokyo District Court recognized the characteristics of the Plaintiff’s shoes including the combination of yellow welt stitching (which has a strong contrast with the black welt) as unique and widely known in Japan (over 35 years sales in Japan, over 30% recognition by consumer survey). The court held that as the appearance of the defendant’s shoes was similar to the above characteristic and there was a likelihood of confusion, the defendant’s act fell under Article 2, Par. 1, Item 1 of the Unfair Competition Prevention Law. As such, the Court granted the injunction .

 

Plaintiff shoes　　　　　　　Defendant shoes

               

(2) Louboutin case （Intellectual Property High Court, December 26, 2022. Case No.2022 (Ne) 10051, Original case No. 2019 (wa)11108）

 

In this case, the IP High Court found that the Plaintiff’s Product was not a “well-known indication of goods, etc.” This was based on the fact that not a small number of women’s high heels with red soles were distributed in Japan other than the Plaintiff’s Product. Further, the appellants had not exclusively used the product form of women’s high heels with red soles. The court also relied on the results of a questionnaire. Therefore, the court concluded that an act of unfair competition under Article 2(1)(ii) of the Unfair Competition Prevention Law (unfair competition in connection with famous indications) was not established.

 

2. Three-dimensional shape protection

In the Maglite case (Intellectual Property High Court June 27,2007, Case No. 2006 (Gyoke)10555), the IP High Court judge ruled that “in light of the fact that products, etc. are normally marked with a mark consisting of the name of the company of origin, symbols, characters, etc. when they are sold, etc., the three-dimensional shape… even if a name or trademark is attached, in case that the three-dimensional shape is easy to notice and leaves a strong impression on consumers, the three-dimensional shape should be recognized to have independently acquired the function of distinguishing the product from others”. This ruling overturned the previous practice of denying the acquisition of distinctiveness of a three-dimensional shape itself based on the addition of word/device marks. Following this decision, there has been an increasing number of cases in which trademark registration has been approved if it can be shown that the three-dimensional trademark itself has acquired a certain degree of subsequent distinctiveness.

 

3. Summary

Based on the above discussion, we offer the following advice on trademark acquisition strategies aimed at eliminating counterfeit products:

(1) First, consider filing a trademark application for the packaging of a product that includes the main brand. By doing so, it secures safe and exclusive use of the packaging. Additionally, at this stage it is possible to exercise rights against counterfeit products, including those of the main brand.

(2) If your client places a great importance on color per se or shape of the goods, and has extensively used the trademark for a certain period in Japan, and it seems possible to prove that the color per se or three-dimensional trademark itself has acquired subsequent distinctiveness, it would be worthwhile considering to file a trademark application for the color/three-dimensional trademark itself. If the rights to this can be obtained, your client can enjoy broader scope of protection and exercise their trademark right against counterfeits which bear a different main brand (word/device mark).

(3) Furthermore, even if the trademark rights cannot be obtained, there may still be protection under the Unfair Competition Prevention Law if it can be proven that the three-dimensional shape, etc. has a certain degree of well-knownness or famous character.

(4) In addition, it is hoped that given the recent legal amendments/revision to Article 2, Paragraph 1, Item 3 of the Unfair Competition Prevention Law, that there will be a reduction of dead copies in cyberspace. However, it is questionable whether this provision applies to cyber products that imitate real products, or vice versa.