A recent decision at the Japan IP High Court has shone a spotlight on the difficulty of obtaining registered trademark protection for non-traditional marks in Japan. One local expert tells WTR that the door is open for a world-famous brand to be the first company to obtain registered protection for a single colour mark in the east-Asian nation.
On 23 June 2020 a colour trademark filed by Hitachi Construction Machinery was rejected for registration by the Japan IP High Court. The case originated on 1 April 2015, when Hitachi Construction Machinery first filed a trademark application consisting of a single colour (a shade of orange) in Classes 7 (eg, hydraulic excavators) and 12 (eg, dump trucks). Four years later, the Japan Patent Office’s (JPO) Appeal Board refused the application, claiming that the colour mark was a “mere single orange colour, without contours” – therefore not inherently distinctive.
In response, Hitachi amended the applications by restricting the goods to only “hydraulic excavators” and subsequently appealed against the JPO’s decision at the end of October 2019. In its argument, Hitachi claimed to have used the specific orange colour on its excavator machines since 1974 and presented survey evidence that suggested 95.9% (out of 193 respondents, consisting of traders in the construction industry) were able to identify the colour as being associated with Hitachi. However, on the flipside, various competitor machines used in Japan (including a Toyota model) use a similar colour.
In its decision, the Japan IP High Court ruled against Hitachi for a number of reasons. First, the credibility of the survey was questionable – especially as it only targeted consumers who own more than 10 hydraulic excavators and because the question (“What maker do you think hydraulic excavator is?”) was deemed insufficient to prove acquired distinctiveness. Further, it was noted that orange is widely seen in Japan as a colour associated with safety – so on construction sites, for example, it is usually seen on helmets, fences, cranes and other vehicles. The defeats followed a second case for a single colour mark (also for a shade of orange), Reiwa1 (Gyo-ke) 10119, which was refused back in March 2020.
According to Masaki Mikami, attorney at law and IP litigator at MARKS IP, the court decision “raises the bar” for registering a colour at the JPO. It is a bar that appears to be particularly high – in one analysis (posted on LinkedIn), Mikami revealed that, as of 12 July 2020, 543 colour trademarks have been applied for at the JPO since the system commenced in April 2015. To date, only eight have been registered – a rate of just 1.5%, and all of them consisting of multiple colours. “We have been longing for the first ‘single colour mark’ to reach registration for the past few years,” he tells WTR. “To be honest, the single colour trademarks that featured in the first and second court cases are not well-known marks to us in Japan. In this respect, then, a world-famous brand owner could be the winner to get the first single colour mark registered at the JPO.”
Of course, to do so will require a brand owner overcoming numerous obstacles during the examination period. Mikami therefore advises that rights holders check whether the meaning of the colour is used elsewhere in Japanese society (noting the concerns in the Hitachi case over the colour orange being linked to safety in Japan). He adds: “Also in the Hitachi decision, the court stated ‘allowing one trader to exclusively use one color would be likely to cause unjust competition’. Therefore, to overcome such a concern, a brand owner must establish a sole and substantial use of a colour mark on relevant goods/services and prevent competitors from using similar colors on same or similar goods/services.”
Another factor that could be important to reach registration would be to “refer to the colour in marketing activities (eg, ‘Tiffany Blue’) so that consumers would connect the colour with the trademark owner”. Finally, he says that the JPO “always questions whether consumers conceive the colour as a source indicator”. Therefore, “mere use of the color on goods, packages, catalogue, advertisements, promotional materials, websites and exhibitions would not be sufficient”.
The race is on, then, for the first single colour trademark to reach registration in Japan. Could it be the aforementioned robin-egg blue colour associated with Tiffany & Co? The brown colour used by the US Postal Service for its trucks (which have operated in Japan since 1990)? Or the distinctive red sole used by the Christian Louboutin footwear brand (which has numerous stores across Japan)? It is only a matter of time before a winner is crowned.