Mag Instrument is first to obtain 3-D trademark registration in Japan in landmark Intellectual Property High Court decision

Client(s) Mag Instrument, Inc.

Jones Day recently acted as counsel to Mag Instrument, Inc. ("Mag Instrument") in an action filed with the Japanese Intellectual Property High Court. The action challenged a Japan Patent Office ("JPO") decision refusing to register Mag Instrument's three-dimensional trademark for the product configuration of its famous MINI MAGLITE® flashlight. In a landmark decision, on June 27, 2007, the IP High Court overturned the JPO's decision, holding that the product configuration of the MINI MAGLITE® flashlight has acquired distinctiveness. Since the introduction of the three-dimensional trademark system in Japan in 1997, many applicants have appealed to the IP High Court in an effort to register their product configurations as three-dimensional trademarks, but none has succeeded until Mag Instrument. The MINI MAGLITE® flashlight is the first product the IP High Court has recognized as a trademark.

In finding acquired distinctiveness, the IP High Court stressed, among others, (1) the shape of the MINI MAGLITE® flashlight has remained unchanged since its first sale in 1984 in the U.S.; (2) numerous MINI MAGLITE® flashlights have been sold in Japan; and (3) the MINI MAGLITE® flashlight has been advertised and widely publicized since 1985, with a heavy advertising and publicity budget devoted to emphasizing the configuration of the MINI MAGLITE® flashlight.