## Facts

- A beverage manufacturer sought registration of a three-dimensional trademark consisting solely of the shape of its well-known plastic bottle used for lactic-acid bacteria beverages.
- The bottle shape had been used continuously since 1968 with no material change, and was found to have been novel in that product sector when introduced.
- The trademark office refused registration because the mark was a common product/packaging shape and lacked acquired distinctiveness.
- On administrative appeal within the trademark office, the refusal was maintained on two grounds: (1) the mark consisted solely of a common packaging shape; and (2) the shape alone had not acquired distinctiveness.
- The manufacturer challenged the administrative decision in court, arguing the bottle shape had become a source identifier through long use, sales, and advertising.
- Evidence showed extremely large sales and sustained, dominant market share over many years.
- Advertising expenditures were substantial and the marketing repeatedly emphasized the bottle’s appearance.
- Many competing lactic-acid beverages later appeared in similar containers; consumer commentary described them as “look-alikes” or “copies” of the manufacturer’s bottle.
- Consumer surveys (one in-person hall test; one large web survey) showed that over 98% of respondents associated an unbranded depiction of the bottle shape with the manufacturer’s product.

## Issues

1. Whether acquired distinctiveness for a three-dimensional shape-only mark may be established when the shape has been used in commerce with additional word marks, logos, or other flat elements, so long as the used configuration is substantially the same as the applied-for shape.
2. Whether, despite the presence of numerous similar containers in the market, the bottle’s shape had come to be recognized by consumers as indicating the goods of a particular source, making it registrable based on acquired distinctiveness.

## Decision

- The court annulled the trademark office’s adverse trial decision, clearing the way for registration.
- The court held that acquired distinctiveness does not require literal identity between the applied-for shape-only mark and marketplace use; substantial identity is sufficient even if additional word marks or minor elements appear in actual use.
- The court found the bottle shape had acquired independent source-identifying significance based on the totality of the evidence, including long and consistent use, sales and market share, advertising emphasizing the shape, survey results, and consumer perception of similar products as imitations.
- The court rejected the view that the existence of similar competitor containers, by itself, defeats acquired distinctiveness where consumers understand the similar shapes as copies rather than as generic packaging.

## Legal Principles

- A three-dimensional mark consisting of a product or packaging shape may be refused as a common shape, but can be registered if use has caused consumers to recognize it as indicating a single commercial source (acquired distinctiveness).
- For acquired distinctiveness of a product-configuration mark, the inquiry is comprehensive and may consider: the shape’s characteristics, duration and continuity of use, geographic scope, sales volume, advertising scale and content, and the presence and meaning of similar shapes in the market.
- In evaluating acquired distinctiveness where marketplace use includes added word marks or other flat signs, the decisionmaker may disregard those additions and assess whether the underlying three-dimensional shape itself functions as a source identifier.
- Widespread imitation does not necessarily negate distinctiveness if consumers and market actors continue to differentiate the original from the imitations and treat the similar shapes as “look-alikes.”

## Conclusion

The court set aside the administrative refusal and held that a long-used bottle shape could be registered based on acquired distinctiveness where the used configuration was substantially identical to the applied-for shape and the evidence showed consumers recognized the shape itself as indicating a single source, notwithstanding later “look-alike” containers in the marketplace.


Yakult Honsha Co. v. Comm’r of the Japan Patent Off., Heisei 22 (Gyo-ke) No. 10169 (Intell. Prop. High Ct. Japan Nov. 16, 2010)