TOKYO — Japan’s Intellectual Property High Court has overturned a decision by the Japan Patent Office not to recognize the shape of the eponymous character from the film “Shin Godzilla” as a 3D trademark, accepting the claims of the film’s producer and distributor.
Distributor Toho Co. applied in September 2020 to register Godzilla’s fourth form, the final evolutionary form of the character appearing in the movie, as a 3D trademark for use in figures and toys. The patent office, however, refused registration and in a hearing in March this year, it dismissed an appeal, stating, “It is merely one form resembling dinosaurs or imaginary creatures.” In May this year, Toho filed a lawsuit calling for the decision to be revoked.
In its decision dated Oct. 30, the Intellectual Property High Court pointed out that from the time “Shin Godzilla” hit theaters in 2016, the form of the character with its countless folds and complex rocklike texture has been “widely recognized by consumers.” Noting that the movie franchise has been releasing new Godzilla titles for over 60 years, the intellectual property court recognized that the character had “overwhelming recognizability,” and accepted the trademark.
The Japan Patent Office could appeal to the Supreme Court if it deems the ruling unfair, but it is highly likely the office will accept the decision and approve registration of the trademark.
Companies are permitted to register trademarks to distinguish their products and services from those of other companies, which include 3D forms in addition to text and diagrams. Other 3D trademarks registered to date include the “Peko-chan” character by confectionary store chain Fujiya Co.; Meiji Co.’s mushroom-shaped “Kinoko no Yama” chocolate snacks, also known as “Chocorooms,” and the first G-SHOCK watch produced by Casio Computer Co.
Meiji has adopted a heightened policy of acting to protect its intellectual property. It has accordingly filed a request with customs to halt the import of imitation wireless earbuds resembling its Kinoko no Yama snacks to prevent the distribution of counterfeit products.
Toho is the first company to file an application for a 3D trademark for Godzilla. When approached by the Mainichi Shimbun, a company representative commented, “We’re happy that our company’s claims have been accepted in court. Going forward, we’d like to work on securing rights in order to utilize and protect our rights to Godzilla and other intellectual property of our company.”
(Japanese original by Shu Hatakeyama, Digital News Group)
