The Japan Patent Office (JPO) recently approved a trade mark application for the shape of the Pocky biscuit, developed and popularised by Ezaki Glico Co. Ltd (Glico). The decision is notable for two reasons:
- Pocky literally got me through undergrad, so you can thank Glico for this article.
- It’s a rare situation where a basic shape is monopolised as a trade mark. Any chocolate-related trade mark update certainly warrants attention.
Background
Pocky has been around since 1966. It is widely-known in Japan, and recognisable to the many Australians who have visited Japan or who love themselves a quick trip up the “international” aisle of their local supermarket. A skinny bikkie coated in chocolate, save for the final inch – cleverly left bare so you don’t get suspicious brown smudges across your important business documents.
Pocky shape trade mark application
In March 2024, Glico applied to the JPO to register the shape of Pocky confectionery as a trade mark. As expected, the JPO initially refused the application on the ground that the shape was non-distinctive. Fair enough: it’s literally a skinny biscuit.
In response, Glico filed evidence to support its claim that the shape had “acquired distinctiveness” – that it had become so well-known that it deserved protection under Article 3(2) of the Japan Trademark Law. That evidence included the results of a consumer survey attesting to a 91.6% consumer recognition rate of the shape alone (without the Pocky name). Interestingly, the sample size was relatively small: around 1,000 participants.
JPO Decision
After reviewing the evidence, the JPO agreed that the Pocky shape had acquired enough distinctiveness to be registered for chocolate. Glico’s application was accepted on this basis.
Analysis
In Australia too, it’s possible to monopolise basic shapes as trade marks for food. But it’s challenging – particularly where the shape has functional characteristics, like Pocky does. In such cases, the trade mark owner must provide evidence of substantial and sustained sales, together with significant consumer recognition.
I wonder how much of the JPO’s decision was influenced by Pocky’s status as a home-grown icon of longstanding. I also wonder how much of Glico’s success arose from it having managed to keep the local market relatively clear of lookalikes over several decades.
It remains to be seen how Glico would fare in securing registration in Australia, especially if the Examiner of its application became aware of competitor products such as Korea’s “Pepero” which is sold in more than 60 countries, including Australia.
If Glico were required to defend any Australian registration in court proceedings, it would also need to contend with a line of cases that have all but sidelined consumer survey evidence as a forensic tool. In the BP Green case, a significant majority (85%) of surveyed consumers said they associated BP’s green with its service stations. However, the Federal Court determined that, given the competitive need for the colour, mere association was insufficient to establish that BP’s green functioned as a source indicator. In other words, association ≠ distinctiveness.
Implications for local food importers and producers
What does this mean for Aussie food brands? For now, not much. Glico hasn’t registered the Pocky shape in Australia yet. Any attempt to prevent the sale of lookalike products by relying on “IP adjacent” actions like passing off would be challenging. But the moment Glico does register the Pocky shape as a trade mark in Australia, importers and manufacturers would need to take heed and steer clear. While I doubt that infringement would ultimately be found (the main difficulty lies in proving that the would-be infringer is using the confectionery shape ‘as a trade mark’), it’s never fun being sued.
If you’ll allow me to get philosophical (if not for chocolate, then when?), the Pocky shape trade mark registration reads like a lesson in gaman, the Japanese art of patience. By adopting a unique product shape, using it extensively over several decades, managing to keep the market relatively clear of copycats (through IP enforcement where required), Glico has qualified itself for a unique form of trade mark protection which – at least on smudge-free paper – is a valuable tool in any IP owner’s arsenal.
