"The JPO should think about amending their practice guidelines, if this case is confirmed", Kozo Yabe, a partner of Yuasa & Hara - the firm that advised Coca-Cola in its application - told Managing IP .

The JPO said in a statement that it was still considering whether to appeal the decision to the Supreme Court. If it does not appeal, it will have to reconsider Coca-Cola's application and, assuming it does not find a different fault, register the trade mark.

This would make Coca-Cola's contour bottle the first successful trade mark application for the shape of a bottle in Japan.

Dan Greif, trade mark counsel for Coca-Cola Pacific Group, highlighted two important parts of the decision.

First, the judgement stated that, because bottles are used to display many different marks and logos, it is not fair to deny that the shape of the goods has acquired secondary meaning just because a word mark is used in association with the shape.

"It would be very difficult for 3D trade marks to be registered if this analysis had not taken place," Greif told Managing IP .

Second, the court said that because minor changes are frequently made to the size and configuration of goods, it is not right to deny a registration because the shape of goods used is slightly different from the shape applied for.

The JPO had used both those arguments when initially rejecting Coca-Cola's application, which the company first filed in July 2003. Coca-Cola appealed to the IP High Court, which held two hearings into the case in January this year.

Greif said that the Court gave four main reasons for recognizing the distinctiveness of the contour bottle: the bottle had been sold extensively in Japan; it was used as a brand symbol in advertising in Japan; surveys showed that consumers recognized the origin of the contour bottle without any logo; and expert witnesses testified that the bottle was an example of a 3D trade mark.

The JPO has traditionally been reluctant to register 3D trade marks. The most high-profile failure involved Suntory Whisky's application for its bottle shape.

In 2003, the Tokyo High Court found no acquired distinctiveness in the company's unusual square bottle, in part because the word mark Suntory Whisky is printed on the bottle's label. Yakult also failed to register the shape of its bottles as a trade mark.

Last year the IP High Court overturned a JPO decision and recognized the Mini Maglite torch as a 3D trade mark , though Maglite's case was helped by a previous court victory against lookalike torches using Japan's unfair competition law.

In its May cover story, Managing IP selected Coca-Cola's attempt to register its bottle in Japan as one of the 10 cases shaping trade mark litigation. Subscribers can access the story here .

In September 2007 Judge Toshiaki Iimura took part in a Managing IP roundtable on patent litigation in Japan .