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Introduction

On August 10, 2023, the Intellectual Property High Court ("IP High Court”) decided against Airwair International Limited ("Airwair") in regard to an application for a positional trademark for the iconic yellow stitching of the famous brand “Dr. Martens” (2023 (Gyoke) No. 10003). The judgement provided some interesting findings and views in relation to the scope of distinctiveness of a positional trademark.

Applied Trademark　

In 2018, Airwair filed for a positional trademark on its iconic yellow welt stich that is applied on many of the products of its well-known brand “Dr. Martens” ("Applied Trademark ") for “leather shoes; boots" in Class 25, which had originally been “shoes” but was amended in the course of the examination. The details of the Applied Trademark is as follows:

[ Detailed description of the trademark ]

A trademark intended to receive a trademark registration is a position trademark in which a position to which a mark is attached is specified and is formed of a yellow broken line figure located along the perimeter of footwear in the area where the upper part of the shoe and sole are in proximity. The dashed line is an example of the shape of the product and is not an element of the trademark.

The Applied Trademark has been used on many of the products produced by Dr. Martens. Below is an example of one of the most iconic boots of Dr. Martens.

"1460 8-hole boots"

The Japan Patent Office (“JPO”) rejected the application of the Applied Trademarks due to a lack of distinctiveness and subsequently Airwair appealed the decision against the IP Hight Court.

 

Overview of the Judgment

The judgement upheld the decision of JPO on the ground that the Applied Trademark does not have inherent distinctiveness and it has not acquired distinctiveness through use. Nevertheless, in the course of assessment of the distinctiveness of the Applied Trademark, the IP High Court  found its distinctiveness on a certain condition.

First, the IP High Court  looked into the inherent distinctiveness. A trademark consisting solely of a mark indicating the shape or other characteristics of a product in a common manner may not be registered as provided in Article3.1.3 of Trademark Law.　The IP High Court  held that the Applied Trademark falls under Article.3.1.3 on the ground that at least manufactures of shoe products with yellow uppers would want to use yellow stitching between the upper and thus allowing Airwair to monopolize the use of yellow stitching between upper and sole of leather shoes and boots through the Applied Trademark would not be appropriate in light of the public interest.

Then, the judgement elaborated on the distinctiveness through use. Under Article.3.2 of the Trademark Law, a mark which falls under Article.3.1.3 may be registered as a trademark if it acquires distinctiveness through use. Airwair argued that the Applied Trademark is distinctive as the iconic feature of Dr. Martens shoes. However, in conclusion, the IP High Court, denied the application of Article.3.2 on the grounds that there was not sufficient evidence to show that the Applied Trademark itself has acquired distinctiveness even when it is used on non-black or non-dark color upper and soles. The IP High Court  acknowledges that the Applied Trademark has acquired a considerable degree of distinctiveness at least when it is used on black leather shoes, but, given that Applied Trademark did not specify the color of the base for the yellow broken line, distinctiveness specifically in regard to yellow stich on black is insufficient for the application of Article3.2.

Although the conclusion of the judgment is dismissal of Airwair’s claim, it is interesting that the IP High Court  rather explicitly admitted the distinctiveness of the Applied Trademark when used on black. Further, notwithstanding the unfavorable decision against Airwair, when the IP High Court  found the distinctiveness of the Applied Trademark on black, there were some notable findings in the judgement that could be considered favorable to Airwair for the protection of its iconic feature. For instance, the IP High Court  acknowledged that there has been a very low amount of lookalike products in the Japanese market due to the anti-counterfeit measures taken by Airwair. Further, the IP High Court  admitted that the survey which shows 38.1% to 47.6% of the survey subjects recognized the yellow welt stich as the characteristic of Dr. Martens products is sufficient to prove the distinctiveness of the yellow welt stich on black welt of Dr. Martens products.

 

Related Case

On December 11, 2020, Airwair filed a lawsuit (2020 (Wa) No. 31524) in the Tokyo District Court against a company who sold lookalike products of Dr. Martens iconic 1460 boots. Airwair sought an injunction based on Article.2.1.1 of the Unfair Competition Prevention Act (“UCPA”). On March 24, 2023, the court accepted Airwair’s claim (the appeal case is pending at the IP High Court) and in the judgement, the court found that the yellow welt stich on the black welt has been well-known among customers and has become distinctive as a source indicator and therefore, the court held that it should be protected under Article 2.1.1 of UCPA. If you compare the indication that was recognized distinctive by the court in this case and the scope of recognition of distinctiveness acknowledged by the IP High Court in the appeal case for the Applied Trademark, you will find the scopes are substantially similar.

 

Conclusion

In this appeal case, the IP High Court  provided detailed evaluations of the distinctiveness through use. It would be helpful to understand how the Japanese court considers the distinctiveness through use in particular for a position trademark with a single color.