News

Enforcement lawsuit of 3D trademark in Japan

by Tomoko Honami (KUBOTA – Japan)

On December 27, 2018, the Tokyo District Court issued a judgment that acknowledged trademark infringement by R&M JaPan Co., Ltd (“R&M JaPan”), who sold lighting apparatuses similar to the 3D trademark of a lamp shade by Luis Poulsen A/S (“Luis Poulsen”), named “PH-5,” and awarded Luis Poulsen damages of approximately 4.4 million JPY (Tokyo District Court No. 2017 (wa) 22543).

[Luis Poulsen’s trademark registration]

Reg. No. 5825191

Designated goods: Lamp shades (Class 11)

Mark:

image

[R&M JaPan’s product]

image(1)

R&M JaPan imported lighting apparatuses shown in the above image and sold them through its website. Luis Poulsen filed a lawsuit for an injunction against its sales and damages on the ground of infringement of its 3D trademark (Reg. No. 5825191, see the above image).

The court found that even though there is a slight difference in the proportion of diameter of the lamp shades, appearances of Luis Poulsen’s trademark and R&M JaPan’s product are identical on the whole.

R&M JaPan rebutted that its products were sold at a lower price as “reproduced products,” namely products produced based on the design of an original product that is no longer protected as an industrial design. Also, R&M JaPan claimed that the scope of the Luis Poulsen’s trademark registration designating “lamp shades” did not cover R&M JaPan’s products, “lighting apparatuses.” In the course of examination of the 3D trademark, Luis Poulsen amended the designated goods from “lighting apparatus and accessories therefor; lighting installations; electric lamps; incandescent lamps; lamp glasses; lamp chimneys; globes for lamps; ceiling lights; chandeliers; fluorescent lamps; gas lamps; oil lamps” to “lamp shades”. The court, however, denied these claims finding that since lighting apparatuses are finished products of lamp shades and sold to the same type of consumers at the same type of locations, they are highly relevant to lamp shades. Thus, the court concluded that there was a likelihood of confusion on the origin of the goods.

Further, R&M JaPan defended that the Luis Poulsen’s trademark registration should be invalidated on the grounds such as that the Luis Poulsen’s trademark was a shape that could be adopted by the same type of goods, “Lamp shades” (Article 3(1)(iii) of the Trademark Act) and had not acquired secondary distinctiveness. While there was no dispute between the parties that the Luis Poulsen’s trademark did not have inherent distinctiveness, the court concluded from the evidence such as sales volume, publications and a record of award-winning that PH-5 products of Luis Poulsen had been recognized as the company’s signature product for many years by interior products dealers and consumers and thus the Luis Poulsen’s trademark had acquired secondary distinctiveness through its use. Consequently, the grounds of invalidation of the Luis Poulsen’s trademark registration were dismissed.

This is likely the first Japanese lawsuit where infringement of a 3-D trademark was found without any claims of unfair competition. The 3-D trademark registration of Luis Poulsen has also been recorded with the Customs to stop imports of counterfeits and this will be an example of effective use of a 3-D trademark in relation to protection of well-known product designs.