A Japanese court dismissed an appeal from perfect replica Audemars Piguet, finding that the Swiss watchmaker failed to show that the design of its coveted Royal Oak has acquired distinctiveness in the market. In a decision in late March, the Japanese IP High Court dismissed an appeal filed by luxury fake Audemars Piguet Holding SA, which sought to overturn the Japanese Patent Office (“JPO”) and its Appeals Board’s earlier refusals to register a trademark that covers the octagonal face of the Royal Oak watch (for use on watches in Class 14) on the basis that the mark lacks inherent distinctiveness and the watchmaker failed to establish that the appearance of the watch design has acquired distinctiveness in the Japanese market.
On the heels of the JPO refusing to register the best 1:1 replica Audemars Piguet UK (“AP”) mark at issue, which consists of “a dial with a tapisserie pattern and hour markers, minute track, date window, an octagonal bezel with 8 hexagonal screws, case, a crown, and a lug of the famed ‘ROYAL OAK’ watch collections,” the Appeal Board affirmed the decision in June 2023. According to the Board, relevant consumers are not likely to view the aaa quality copy Audemars Piguet mark as an indicator of a single source (and thus, a trademark), and instead, would view it as a generic shape of a wristwatch in light of the prevalence of similarly-shaped watches from other watch-making entities.
As such, the mark lacks inherent distinctiveness based on Article 3(1)(iii) of the Japan Trademark Law, and AP failed to produce sufficient evidence to show that the shape per se has acquired distinctiveness in the market (as required by Article 3(2)), the Board determined.
Unsatisfied with the outcome, Swiss made replica Audemars Piguet lodged an appeal with the Japan IP High Court, as first reported by Marks IP, arguing that the trademark office should have green-lit its application for registration for the shape of the top quality fake Audemars Piguet Royal Oak face for use on watches. And in a decision in March, the IP High Court handed AP yet another loss.
First focusing its attention on inherent distinctiveness, the court found that “there is no particular circumstance in which the shape represented by the applied [for] mark is novel” when compared to the shapes of other super clone wristwatches for sale. Even if the shape was “unique as a whole,” the court held that “the shape of each component is made in a form suitable for use as a wristwatch and selected from the viewpoint to achieve the function of the goods.” As such, the applied-for mark “remains within the scope of expected selection of the shape for functional reasons of a wristwatch, [and therefore], lacks distinctiveness.”
(In connection with the issue of distinctiveness, it is worth considering the extent to which other watches in the market make use of of the elements like the octagonal bezel, the placement of multiple screws, etc. due to the fact that they are looking to mirror the well-known design (and piggyback on the appeal) of the Royal Oak, a fact that would certainly weigh in Swiss movement replica Audemars Piguet’s favor.)
As such, the mark lacks inherent distinctiveness based on Article 3(1)(iii) of the Japan Trademark Law, and AP failed to produce sufficient evidence to show that the shape per se has acquired distinctiveness in the market (as required by Article 3(2)), the Board determined.
Unsatisfied with the outcome, high end copy Audemars Piguet lodged an appeal with the Japan IP High Court, as first reported by Marks IP, arguing that the trademark office should have green-lit its application for registration for the shape of the Royal Oak face for use on watches. And in a decision in March, the IP High Court handed AP yet another loss.
First focusing its attention on inherent distinctiveness, the court found that “there is no particular circumstance in which the shape represented by the applied [for] mark is novel” when compared to the shapes of other wristwatches. Even if the shape was “unique as a whole,” the court held that “the shape of each component is made in a form suitable for use as a wristwatch and selected from the viewpoint to achieve the function of the goods.” As such, the applied-for mark “remains within the scope of expected selection of the shape for functional reasons of a copy wristwatch, [and therefore], lacks distinctiveness.”
(In connection with the issue of distinctiveness, it is worth considering the extent to which other watches in the market make use of of the elements like the octagonal bezel, the placement of multiple screws, etc. due to the fact that they are looking to mirror the well-known design (and piggyback on the appeal) of the best quality copy Audemars Piguet Royal Oak UK, a fact that would certainly weigh in AP’s favor.)
