3D Shape Trademarks in Japan: Which Product and Packaging Shapes Can Be Registered?

"Can we register the shape of our product or bottle as a trademark in Japan?"
"How is a 3D mark different from a normal trademark?"
"Which shapes can and cannot be registered?"

Most people think of trademarks as words and logos. In Japan, however, the three-dimensional shape of a product, its packaging or an advertising object can also be registered — this is the 3D (three-dimensional) trademark, introduced by the 1996 amendment of the Trademark Act and in force since 1997.

This guide by Toru Kano, Japanese Patent Attorney at BrandAgent (Kyoto), explains what can be registered, what cannot, and how to file a 3D mark in Japan as an overseas company.

What a 3D trademark covers

Under Article 2(1) of the Japanese Trademark Act, a mark can be a three-dimensional shape alone or combined with letters, figures, symbols or colours. Typical subjects:

• The shape of the product itself (a distinctive snack, a figure, a tool)
• The shape of the packaging (a characteristic bottle, can or case)
• The shape of objects used to provide a service
• Advertising objects such as shop mascot figures or 3D signboards

A store building is generally not treated as "advertising" unless the whole building functions as a distinctive sign.

Shapes that cannot be registered

1. The ordinary shape of the goods (Article 3(1)(iii))

A shape that consumers see as just the shape of the product or its packaging lacks distinctiveness. A car maker cannot register "a car-like shape" for cars; a spirits maker cannot register an ordinary bottle. The JPO applies this strictly — the shape must stand out enough to point to one company.

2. Shapes essential to function (Article 4(1)(xviii))

A shape that is indispensable to secure the function of the goods or packaging — a round tyre, a spherical ball — can never be registered, even if it has acquired distinctiveness through use. Because trademarks can be renewed indefinitely, registering such shapes would give a permanent monopoly over the product itself.

Acquired distinctiveness through use (Article 3(2))

A shape that is not distinctive at first can be registered if, after long and extensive use, Japanese consumers recognise it as coming from one company. Japanese courts have accepted this for well-known bottle shapes, such as the Coca-Cola contour bottle. You will need solid evidence of use and recognition in Japan — sales, advertising, market share and surveys.

Another route: combine a non-distinctive shape with a distinctive word or logo. The mark as a whole can then be registered, although the shape part alone will not be protected.

How to file a 3D trademark in Japan

• State in the application that the mark is a three-dimensional trademark (Article 5(2)). Without this statement, a perspective drawing may be treated as a flat mark.
• Provide drawings or photographs of the shape — views from several angles are recommended so the shape is clear.
• Check in advance that the shape is not the ordinary shape of the goods and not essential to their function.
• Choose goods and services carefully, as with any Japanese application.

3D trademarks, design rights and patents

Shapes can also be protected by a Japanese design right (up to 25 years from filing) or, for technical features, a patent. Design rights are often easier to obtain for a new shape; a 3D trademark can last indefinitely once distinctiveness is established. Many companies combine them.

• If using your registered 3D mark would conflict with someone else's earlier patent, utility model or design right, the use is restricted to that extent (Article 29).
• Where an earlier patent conflicts with a later trademark, the former patentee may keep using the shape within the scope of the expired patent, if not for unfair competition (Article 33-2).

Filing from overseas

• Applicants without an address in Japan must file through a Japanese patent attorney.
• Direct filing or a Madrid designation of Japan; Paris priority within 6 months.
• Examination about 9–12 months; accelerated examination about 2–3 months.

FAQ

Q. Can we register the shape of our product?
A. Yes, if it is distinctive. The ordinary shape of the product cannot be registered unless it has acquired distinctiveness in Japan through use.

Q. Is a bottle or container shape a 3D trademark?
A. Packaging shapes are covered. An ordinary bottle will be refused, so the shape must be distinctive.

Q. Can we combine the shape with our logo?
A. Yes. The combination can be registered as a whole if it is distinctive.

Q. Should we use a design right instead?
A. Often both. A design right protects a new shape for up to 25 years; a 3D trademark can be renewed indefinitely.

Related articles

• Registering a Logo Trademark in Japan: Word, Symbol or Combined Mark?
• Standard Character Marks in Japan: Word Mark vs. Logo Mark and How to Choose
• Refused for Lack of Distinctiveness in Japan? Article 3 of the Japanese Trademark Act Explained
• Trademark vs Patent vs Design vs Copyright in Japan: What Each One Protects