Hermès is angling to overturn a finding of the Japanese trademark body, which determined earlier this year that the combination of orange and brown that can be found on Hermès’ product packaging is not necessarily an indicator of the brand. In a filing lodged with the Appeals Division of the Japan Patent Office (“JPO”) this fall, the nearly 185-year-old French luxury goods brand is arguing in favor of the registration of its specific orange and brown hues as a trademark for use on product packaging for cosmetics, jewelry, leather goods, and retailer services, among other goods/services, on the basis that consumers in Japan do, in fact, associate the famed two-color combination with a single source: its brand, thereby, enabling the orange and brown combo to operate as a trademark.
The appeal from Hermès follows from its unsuccessful argument that the combination of orange and brown on product packaging has acquired distinctiveness in the minds of relevant consumers, making it so that they associate the colored product packaging with the Hermès brand. In furtherance of its argument, counsel for Hermès stated that the brand has been consistently using the color combination on its product packaging in Japan since the 1960s and cited survey evidence that it conducted among “high-income men and women in their 30s to 50s” with incomes of JPY10,000,000 ($87,951.91) and above that shows that a portion of consumers link the colored packaging to the Hermès brand.
The Hermès survey revealed that 36.9 percent of the individuals pointed to the Hermès brand when they were shown three boxes in different shapes all bearing the orange and brown color mark. Meanwhile, 43.1 percent identified Hermès as the source when shown ten different box options in the trademark colors.
Reflecting on Hermès’ survey, an examining attorney for the JPO was not convinced that the results are “persuasive to support acquired distinctiveness among relevant consumers of the goods and services in question,” namely because Hermès limited the pool exclusively to high-income individuals. In addition to stating that the survey should have been applied to a pool of consumers with a broader range of incomes, the JPO examiner determined that “even among high-income consumers, more than half of them did not link the color to Hermès.” Based on Hermès’ survey, Osaka-based trademark attorney Masaki Mikami notes that “it is doubtful if relevant consumers would conceive the color per se as a source indicator.”
Mr. Mikami has told TFL that as of November 15, 2020, 543 applications for color marks were filed with the JPO. As for the number of those applications that have resulted in registration: a mere eight, which makes for a 1.5 percent “success rate.” He further notes that this trend, which has seen the eight existing color registrations issued exclusively to large companies, may “imply that the JPO considers color marks to be unavailable for registration without enormous investment” by the filing party, which means that “smaller companies and startups cannot take advantage of color marks as a branding tool at all, contrary to other traditional and non-traditional trademarks, e.g. name, shape, logo (design), position, motion.”