Examination History

On September 29, 2020, Toho Co. (“Toho”) filed a trademark application for the 3D shape of Godzilla’s fourth form in the film “Shin Godzilla” as a 3D trademark for “stuffed toys, figures, dolls, and toys” in Class 28 (TM App. No. 2020-120003) and finally rejected due to lack of distinctiveness. The applied-for mark (“Godzilla Mark”) is as follows:

Toho appealed against the decision at the JPO Trial and Appeal Board (Appeal No. 2021-111555) and argued that the Godzilla Mark had acquired distinctiveness. However, the JPO Trial and Appeal Board rejected its argument based on the following reasons:

1. The sales period of Godzilla’s fourth form figures, etc. (hereinafter referred to as “the Figures”) is about seven (7) years, which is not a “long time.”
2. The sales figures include the sales results of licensees, and only the sales results about Toho cannot be ascertained.
3. Considering the market size (JPY 824.4 billion in FY2020 and JPY 890 billion in FY2021), the Figures do not have a high market share.
4. The Godzilla Mark is not used in various advertising media to give the impression of Toho’s trademark by emphasizing the three-dimensional shape of the mark, and no evidence was submitted as to the duration, scale, or cost of advertising.
5. According to the results of the questionnaire conducted by Toho, the three-dimensional shape of the Godzilla Mark “can be presumed to be recognized to a certain extent” by the public. However, it is not possible to determine the degree of recognition of the association between the three-dimensional shape of Godzilla Mark and Toho.
6. Therefore, the Godzilla Mark has not obtained acquired distinctiveness.

 

Decision of the IP High Court

The IP High Court affirmed the decision of the JPO Trial and Appeal Board that Godzilla Mark falls under Article 3(1)(iii) of the Trademark Law but reversed its decision on acquired distinctiveness, stating as follows:

1. Because the three-dimensional shape of Shin Godzilla differs in overall proportions and colors from the previous Godzilla, the three-dimensional shape of “Shin Godzilla” itself must be extensively used to obtain acquired distinctiveness. However, in determining whether Godzilla Mark has acquired distinctiveness, it is not precluded but rather necessary to consider the impact of the “Godzilla” series of films on consumers’ perceptions.
2. Taking the following facts together, Godzilla Mark has acquired distinctiveness as a result of its use of the designated goods:
   - The figure in question recorded sales of 1.02 million pieces and a sales value of approximately JPY 2.65 billion.
   - The basic shape of Shin Godzilla largely follows the basic shape of the previous Godzilla, and that basic shape was widely recognized as the shape of the character provided by Toho among general consumers.
   - The wordmark “Godzilla” has become well-known as the name of the monster in the Godzilla films, and the name “Godzilla” has been consistently used for the monster character throughout the series.
   - In Toho's questionnaire survey, 64.6% of respondents answered “Godzilla” or “Shin Godzilla” in an open-ended response to the question “What do you think the figure is modeled after?” by showing a photograph of Godzilla Mark.
3. “In this case, even before the use of the trademark, there existed a special circumstance in which the products of the Godzilla character, of which Toho was the main merchandiser, had been widely and deeply penetrated by consumers, and the 3D shape of the trademark was recognized as being continuous with such products.”
4. Use by a licensee “should also be understood to be included in ‘use’ within the meaning of Article 3(2) of the Trademark Law if the manner of use of the trademark is properly controlled by the applicant so that consumers can recognize it as the applicant's goods.”

 

Conclusion

This decision judges that it is necessary to consider the influence of the entire “Godzilla” series of films linked to “Shin Godzilla” on consumers' perception when determining whether or not the character has acquired distinctiveness. It is considered the Court acknowledges that it is necessary to take into account the fame of the character itself. Although not all 3D shapes of characters are allowed to be registered as trademarks for figures, etc., it is considered to be a useful reference when considering the registration of 3D shapes of characters in Class 28 in the future.