G-SHOCK Granted 3D Trademark Registration for Japan’s First Wristwatch. – Japan Patent Office Allowed First-Ever Registration of Wristwatch as 3D Trademark

CASIO successfully obtained the three-dimensional trademark registration for the shape of the G-SHOCK wristwatch under Japanese trademark Reg. No. 6711392 as of June 26, 2023.

Background
CASIO COMPUTER CO., LTD. (“CASIO”), the manufacturer of the famous watch series “G-SHOCK”, filed the following 3D shape with the JPO on April 28, 2021, as a 3D trademark covering “wristwatches” in International Class 14.

The Examiner at the examination phase notified a provisional refusal on August 12, 2021, due to lack of distinctiveness. The Examiner pointed out that, since the subject trademark is considered by consumers just as a wristwatch, it is not able to distinguish a source of goods from other wristwatches.

In response, on September 29, 2021, CASIO submitted an argument and a large volume of evidence including consumer survey results. In the argument, CASIO asserted that this unique shape of the wristwatch as a whole has already been recognized as “CASIO’s G-SHOCK wristwatches” through extensive use, not only in Japan, but also all over the world, and has already acquired “secondary meaning.”

The JPO, however, issued a decision of refusal on April 11, 2022. In the decision, the Examiner determined that i) the subject trademark originally lacks exclusive adaptability and any distinctiveness of its own, ii) the nationwide sales record of more than 40 years was made under the “CASIO” trademark and the “G-SHOCK” word mark, which are representative source identification signs of the applicant, and iii) that the three-dimensional shape of the subject trademark alone is not recognized as “G-SHOCK”.

CASIO filed an appeal against the decision of refusal with the Trial/Appeal Board on July 15, 2022.

The Trial/Appeal Board Decision
On May 23, 2023, the Trial/Appeal Board of the JPO gave a decision as follows:

The subject trademark represents G-SHOCK’s first model (DW-5000) and the said wristwatches having a shape equivalent to the subject trademark, including successor products, have a sales period of about 40 years since their release in 1983, and their sales results have also increased their stable sales volume over a long period of time, and the sales volume has been increasing in recent years.

In addition, in advertising and promotion, introduction articles with photos such as DW-5000 are continuously posted and broadcast through the media, and according to these kinds of information, the subject trademark is positioned as a representative model that symbolizes the CASIO brand (G-SHOCK). Also, the shape itself is evaluated as consisting of a unique shape for impact resistance, which is not found in conventional watches.

In addition, according to the Questionnaire Survey, more than 60% of men and women aged 16 years or older living in Japan were able to answer the association with CASIO from the image equivalent to the subject trademark, considering the multiple-choice responses.

Given these facts, the three-dimensional shape (bezel, case, band) corresponding to the subject trademark has already been recognized to a considerable extent among consumers pertaining to the designated goods as a unique product shape provided by the subject wristwatches (DW-5000), and it has come to be widely recognized as a feature that can be a source identification sign for CASIO.

Therefore, as a result of use by CASIO, the subject trademark acquired distinctiveness, and it meets the requirements of Article 3, Paragraph 2 of the Trademark Law (Secondary Meaning.)

Following the Trial/Appeal Board Decision, the JPO registered the 3D shape as Japanese trademark reg. no. 6711392 on June 26, 2023.

Comments
Generally speaking, it is very difficult to register a three-dimensional trademark in Japan. The JPO will require the three-dimensional trademark to have required “Secondary Meaning” through its use. In particular, in the case of the shape of the product itself, there are only a few registration examples across all classes. This is the first landmark case in Japan in which a three-dimensional trademark was registered with respect to “wristwatches.” As to the acquiring of “Secondary Meaning” through use, the time from the start of sales to the present, the sales volume during that time, the amount of advertising, and the importance of questionnaires in a survey are pointed out. In this case, it was disputed whether 60% of the awareness of the questionnaire survey results was high or low. In the examination phase, 60% was judged to be low and rejected, but the Appeal Examiners judged that 60% was sufficient and the registration was approved. At the appeal phase, a written expert opinion of a university professor who is an authority in this field has also been submitted. We believe that this will be a leading case that will be used as a reference in similar cases in the future.