Shin Godzilla finally calms down: IP High Court approves 3D Trademark

On 30 October 2024, the Intellectual Property High Court (IP High Court) overturned the Japan Patent Office (JPO) trial board’s decision, which had rejected the registrability of the Shin Godzilla (Godzilla Resurgence) figure as a three-dimensional trademark.

The Shin Godzilla figure, while remodeled, retains key characteristics of the original Godzilla prototype from 1954. The key issue was whether the appearance of Shin Godzilla could realize secondary meaning as a registrable trademark. Initially the JPO rejected the figure’s registrability, even considering secondary meaning. However, the IP High Court affirmed its secondary meaning, recognizing Shin Godzilla’s well-known status traced back to the original Godzilla figure among Japanese viewers and consumers across various merchandise categories

1. The IP High Court Recognizes Shin Godzilla’s 3D Trademark’s Secondary Meaning

Toho Co., Ltd. (TOHO), a dominant Japanese movie and entertainment company, filed a trademark application for the three-dimensional appearance of the Shin Godzilla figure on 13th October 2019. The original Godzilla movie, released by TOHO in 1954, introduced Godzilla as a monster born from the radioactivity of hydrogen bomb tests in the Southern Pacific Ocean, serving as a critique of the atomic and hydrogen bomb race during the Cold War.

The JPO rejected the application on May 28, 2021, citing a lack of distinctiveness for the figure’s appearance, deeming it a typical monster figure (Art.3, Para.1, Subpara.1 of the Trademark Act [TRA]), and no secondary meaning had been established (Art.3, Para.2 of TRA). TOHO appealed this decision to the JPO’s trial examiner’s board (Case No. Fufuku 2021-11555) on August 30, 2021, but the board upheld the original decision on April 12, 2024. Subsequently, TOHO appealed to the IP High Court (Case No. Reiwa 6 [2024] (GYO KE)10047 : (in Japanese)) on May 10, 2024, seeking to overturn JPO’s decision.

The 4^th Division of the IP High Court upheld the JPO’s decision to reject the distinctiveness per se of the Shin Godzilla figure’s appearance. However, the Division acknowledged that the Shin Godzilla figure has realized secondary meaning due to its shared characteristics with the original Godzilla figure, which is appreciated not only by moviegoers but also by consumers of Godzilla-related merchandise.

The judgement noted that the Godzilla character has achieved “overwhelming awareness” among viewers and consumers since the release of original Godzilla movie in the 1950s. This conclusion was based on extensive media exposure, merchandise sales, and an internet consumer survey conducted by TOHO. Despite JPO’s detailed rebuttal of TOHO’s data, the court recognized the general perception of the Shin Godzilla figure as a figure with secondary meaning.

If JPO does not appeal to the Supreme Court and the case is returned to the JPO, the JPO should grant the trademark registration for the three-dimensional trademark to TOHO, unless other reasons for rejection are found.

2. 3D Trademarks in Japan

In the 1996 Amendment of the TRA, the definition of a trademark was expanded to include “a three-dimensional shape of goods” (Art.2, Para.1 of TRA). Since then, numerous successful registrations of three-dimensional trademarks have been made for unique configurations of goods, characters, statues, buildings, and more. Examples include the distinctive plastic bottle of a lactic acid bacteria drink and a statue representing a food or confectionary business.

However, many applications of three-dimensional trademarks have faced rejections due to issues with distinctiveness. These configurations were often seen merely as shapes or forms of goods, characters, statues, or buildings, without any associations with specific goods or service sources (Art.3, Para.1, Subpara.3). Additionally, some shapes were considered essential for proper function or their packaging, leading to further rejections (Art.4, Para.1, Subparas.18 of TRA).

Therefore, successful registrations of three-dimensional trademarks in the past have required evidence of secondary meaning to verify these configurations as identifiers of goods/service sources. Establishing secondary meaning for the shape of goods typically demands that the configuration is popular among consumers. To prove this, consumer surveys, particularly those conducted online with a significant sample size, are often used. However, courts have shown varying attitudes towards accepting such survey results, depending on the specifics of each case, from the perspective of legal counsels representing trademark applicants.

Against this backdrop, the IP High Court judgement provided an interesting comment in its reasoning. It stated, “Even though a three dimensional configuration of Shin Godzilla is the subject [of the current trademark application] to determine use under Art.3, Part.2 of TRA [secondary meaning provision], the influence created by the entire Godzilla movie series, from the original Godzilla to Shin Godzilla, should not be disregarded but rather considered.” However, Shin Godzilla figure still shows some apparent changes of appearance from the original Godzilla figure in 1950s. Although the judgement thought such changes were able to be superseded by the general perception endorsed by the historic strong influence of Godzilla movie series, this point is still arguable to judge the secondary meaning.