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KHMER SEMINARMay 1, 2009

OF

THREE-DIMONSIONAL SHAPES

Presenter: KORK BorenModerator: NGIM Sokrachany

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on purchasing one particular good? xamp es o your avor te mar s

Value of mark?

History of mark?

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Roles of mark: This BNS CAKEE is madeby BNS Confectionery(Indication of source)

BNS CAKEE is absoluteldelicious (Guarantee ofquality)BNS CAKEE

Please bu BNS CAKEE!(Advertisement)

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Le al rotection of marks:

Legal instruments: Trademark Law, Unfair

Competition Law Purpose of legal protection (maintenance of

business re utation, rotection of consumers interests,

development of industry)

Ri hts ranted u on re istration

Length of protection: 10 years from the date

(Renewable)

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Sco e of le al rotection:Right to

exclusively use

Similar marks

others from usingProtectionBy Unfair

BNS

Law

B&S

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Re uirements for le al rotection:

Subject matters: Goods or Services

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Re uirements for le al rotection:

Unregistrable marks:

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Grounds for rejection:

1- Common name of the oods or service:

Hamburger

WATCH

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2- Customary name of the good or service

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3- Marks indicating a common way of origin, place

of sale, quality, material, price, shape of goods

One Million Yen

SILK

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Conventional t es of marks:

Characters

Figures

Signs

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Unconventional t es of marks:

, ,

marks)

Invisible marks Sound marks Olfactormarks, Touch marks, Taste marks)

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Exam les:

Single color marks:

Registered in the USRegistered in EU

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Combination of colors:

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Sound mark:

Registered in the US and EU

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Protection under Unfair Competition LawJapan:

Requirements:

Distinctiveness

Widely-known (Defendant Area)

m ar y o mar s Confusion

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Example:

Sanyo Its case, Osaka High Court, March 27, 1997, UnfairCom etition Prevention Law Article 2.1.1 : Dark Blue is notdistinguishable

SANYO its TWINBIRD mi

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Three-dimensional marks:

Pepper Mill (inherently distinctive)

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Perfume (inherently distinctive)

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Protection of 3D sha es as marks:

Requirements:

Inherent Distinctiveness

Functionality Test

ar an unc ona y

Aesthetic Functionality

Acquired Distinctiveness (Secondary

Meaning)

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Court Decisions:

23 cases as of 2008

1 case Inherent distinctiveness

2 cases Secondary meaning

20 cases - Rejected

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GuyLian chocolate Case, IP High Court, June 30,

2008Inherently distinctive

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Decisions:

Japan Patent Office Rejected:

No inherent distinctiveness nor secondarmeaning

New design

No similar design in the market

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Mini Maglite Case, IP High Court, June 27, 2007

Secondary Meaning

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Decisions:

Japan Patent Office Rejected

No inherent distinctiveness nor secondarmeaning

No change of design since 1983

Number of sales in a year in Japan: 600 000

No similar design in the market Effective advertisement strengthening shape

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Coca-Cola Case IP High Court, May 29, 2008

Secondary Meaning:

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Decisions:

Japan Patent Office Rejected

No inherent distinctiveness nor secondarmeaning

- Utility and aesthetics enhancement of the

beverage container.

- Not go beyond the shape or configuration of goodsor a container thereof as represented in a normal

manner.

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IP High Court Secondary meaning admitted

No change of design since 1957 in Japan No similar design in the market

=

Number of sales in a year = 96 million bottles

Consumer survey: 60-80 percent recognition

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Re ected 3D sha es:

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Arguments against Legal Protection of 3D

shapes as mark:

Lack of distinctiveness (Functionality)

Overlapping scope of protection (Trademark.

Shrinking of the Public Domain

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Counter Ar uments to Prof. Khour s:

Scrutin of ud es and examiners Analo of3D shapes with conventional marks

3 a t r in th trad mark n r Trademarkowner, competitor and consumer

Anal f IP with r al r rt free ridin

concept Double protection

Analogy of trademark with other fields of IP

Shadow test

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