Episode 18

It is possible to apply for design registration for three-dimensional shapes, and it is also possible to apply for registration as a three-dimensional trademark.
Since design rights are creations resulting from human mental activity, registration requires novelty and creatability, and the term of the right is limited (25 years from the application date).
In contrast, trademark rights protect business reputation, so they require awareness through use, and the term of the right is semi-permanent through renewal registration.
The Intellectual Property High Court has ruled as follows on this matter.
"Given that trademark rights can be held semi-permanently by repeatedly renewing the duration of their validity, granting protection to three-dimensional shapes that were the subject of utility model rights or design rights through trademark rights could result in a specific person being granted exclusive rights semi-permanently beyond the duration of the rights under the Utility Model Law or Design Law, which would unfairly restrict fair competition between businesses. Therefore, unless there are special circumstances in which the three-dimensional shapes that were the subject of utility model rights or design rights have acquired distinctiveness unrelated to the monopoly of the rights, it cannot be deemed that they have acquired distinctiveness through use." (Intellectual Property High Court Case 2017 (Gyo-Ke) No. 10155, Judgment of January 15, 2018)
Recently, special circumstances in which "distinguishing power through use" has been recognized, a three-dimensional trademark for Shin Godzilla was approved.
Based on the "overwhelming recognition of the Godzilla character," the court ruled that "although the trademark in question falls under Article 3, Paragraph 1, Item 3 of the Trademark Act, the trademark in question falls under Article 3, Paragraph 2 of the Trademark Act because it can be recognized that the use of the trademark in question on the designated goods has led to general consumers being able to recognize that the goods are related to the plaintiff's business." (Intellectual Property High Court Case No. 10047 of 2024 (Gyo-Ke) of October 30, 2024)