No Single-Color Marks Registered Yet [Japan Trademark / Design Update]

https://www.tmi.gr.jp/uploads/2020/11/17/jptu_issue16.pdf#page=6

Introduction

Five years have already passed since the Japan Patent Office (“JPO”) started accepting applications for Non-Traditional Marks (“NTMs”). However, since such time, there has not yet been even one “Single-Color Mark” granted at the JPO or the JPO TAD (Trial and Appeal Department) level; although a few of the rejected cases have been brought to the IP High Court (“IPHC”).

First IPHC Decision Discusses Registrability of Single-Color Marks

Early this year, the IPHC issued its first decision regarding the registrability of “Single-Color Marks.”

(2019 (Gyo-Ke) 10119 Intellectual Property High Court, on March 11, 2020, Administrative Litigation)

App. No. 2015-30535 Rejection 2018-003370 (LIFULL CO., LTD)	Class 36 - Providing information on buildings or land [real estate affairs] in an internet portal site regarding real estate
	Detailed description of mark: The applied-for mark was composed solely of an orange color (RGB combination of R237, G97 and B3)

Although the applicant, LIFULL, asserted the acquired distinctiveness of the claimed orange color, which LIFULL has been using on real estate portal site, the IPHC agreed with the JPO TAD’s decision which rejected the application based not only lack of distinctiveness but also lack of acquired distinctiveness. The IPHC pointed out the fact that the claimed-for orange color is ordinary and commonly used in logos, or backgrounds of websites, etc. and the evidence of use submitted by LIFULL to prove its acquired distinctiveness, including TV commercials, was insufficient since the orange color itself was not used as a source identifier by LIFULL.

LIFULL also submitted survey evidence conducted during the JPO Appeal stage; however, the IPHC found that the questionnaire used for the survey was biased. LIFULL conducted another survey after filing this lawsuit; however, the results were not sufficient to establish the acquired distinctiveness of the orange color, as only 13.2% of the respondents recognized the orange color as being associated with “LIFULL HOME’S” and 41.8% of the respondents recognized the orange color as being associated with “HOME’S. Although almost 55% of the respondents recognized the orange color as being associated with the applicant, this was still insufficient to establish acquired distinctiveness; especially for a “Single-Color Mark.”

Another Orange Color Mark Also Rejected by IPHC

Coincidentally, after the LIFULL decision above, the IPHC issued another decision regarding an orange color mark, which also held that the applied-for single color mark lacked distinctiveness and also did not possess acquired distinctiveness.

(2019 (Gyo Ke)10147 Intellectual Property High Court, on June 23, 2020, Administrative Litigation)

App. No. 2015-29999 Rejection 2017-002498 (Hitachi Construction Machinery Co., Ltd.)	Class 7 - Hydraulic excavator
	Detailed Description of mark: The applied-for mark was only composed of an orange color (Munsel value 0.5YR5.6/11.2)

(2019 (Gyo Ke)10146 Intellectual Property High Court, on June 23, 2020, Administrative Litigation)

App. No. 2015-30000 Rejection 2017-002498 (Hitachi Construction Machinery Co., Ltd.)	Class 7 - Hydraulic excavator
	Detailed Description of mark: The applied-for mark was only composed of an orange color (Munsel value 0.5YR5.6/11.2)

Comments

Despite a total of 543 Color Mark applications having been filed between April 1, 2015 and April 30, 2020, only 20 applications were filed in 2018 and six (6) applications and three (3) applications were filed in 2019 and 2020, respectively. Such decreasing number of Color Mark applications indicates the high hurdle it is necessary to clear in order to show acquired distinctiveness of a “Single-Color Mark” and there are therefore fewer applicants currently trying to obtain “Single-Color Mark” registration. These recent IP High Court decisions may create a stronger tendency for the applicant to be reluctant to file “Single-Color Mark” trademark applications.