On October 31, 2023, the Japan Patent Office (JPO) rejected color marks for use on farm tractors by KUBOTA Corporation due to a lack of inherent and acquired distinctiveness in relation to farm tractors in class 12.
Kubota farm tractors
KUBOTA Corporation, established in 1890, a Japanese company manufacturing a wide range of agricultural machines, launched its farm tractors in 1960. According to the allegations, KUBOTA has used an orange color and black-and-orange colors on its farm tractors since 1980. In recent years, the tractors have occupied top market share of around 50% in Japan.
On December 26, 2018, KUBOTA applied for registration of color marks (see below) consisting of an orange color and color combinations (orange and black / orange, black and white) with the JPO in relation to farm tractors of class 12.
JPO rejection
The JPO examiner rejected the applications based on Article 3(1)(iii) of the Japan Trademark Law and found every color mark does not satisfy requirements of Article 3(2) by stating that:
Farm tractors with similar color have been distributed by several competitors. Orange color has been commonly used on other agricultural machinery. Under the circumstances, there is no distinctive character to apply and use the applied color(s) on body, front grill, wheels of farm tractors. If so, the color marks are deemed descriptive in relation to the designated goods and shall be rejected based on Article 3(1)(iii).
The market research that targeted 589 consumers resulted in approx. 30% of the interviewees answering “KUBOTA”. The result is insufficient to admit the color(s) per se has acquired distinctiveness as a source indicator because more than 30% associated the mark with other competitors in spite that Kubota’s tractors have occupied top market share for long years.
In view of the fact that orange corresponds to one of safety colors determined by the Japan Industrial Standards (JIS), there is a high demand to freely use the color in our society.
Based on the foregoing, the examiner has no reason to believe the applied color marks have acquired a secondary meaning and played a role in identifying the source of Kubota’s farm tractors by itself.
On August 10, 2023, the Japan IP Hight Court ruled to dismiss an appeal by Airwair International Limited to the JPO’s rejection against a position mark for Dr. Martens’ Yellow Welt Stitch.
[Court case no. Reiwa 5(Gyo-ke)10003]
Dr. Martens’ Yellow Welt Stitch
Airwair International Limited, a UK company, applied a position mark consisting of a yellow stitching around the perimeter of footwear on the outer sole edge (see below) for use on leather shoes and boots in class 25 with the JPO on June 12, 2018 (TM App no. 2018-77608).
Allegedly, first use of the position mark on the Dr. Martens “1460” boots has dated back to 1960 in UK. Leather shoes and boots bearing the yellow welt stitch have been continuously distributed in Japan by the applicant or a local subsidiary (Dr. Martens Japan) via company store (61 shops at present) and major shoes retailers since 1985. Recent annual sales for Dr. Martens’ shoes in Japan exceed 6 billion Japanese yens and over 460,000 pairs. Airwair has routinely monitored and taken legal actions against lookalikes of shoes bearing the yellow welt stitch and been successful in stopping distribution of following shoes.
According to the brand awareness survey that targeted a total of 1,019 men and women aged from 15 to 59, 30.7% of the interviewees who have purchased leather shoes and boots could answer Dr. Martens at the sight of black leather shoes with the yellow welt stitch and 37.6% selected Dr. Martens from multiple choice.
On August 23, 2022, The JPO Appeal Board decided the yellow stitching of Dr. Martens does not possess its own distinctive character by stating that relevant consumers would not see the stitch as a source indicator, but as a mere decoration. The Board also negated acquired distinctiveness of the position mark based on the fact that a majority of frequent users of the goods in question could not connect the stitch with Dr. Martens. Accordingly, the Board sustained the examiner’s rejection (Appeal case no. 2021-2446).
Airwair filed an appeal against the JPO Appeal Board decision and argued inherent and acquired distinctiveness of the Dr. Martens’ yellow welt stitch in relation to leather shoes and goods.
IP High Court decision
Inherent distinctiveness
The Court paid attention to the circumstance that plenty of leather shoes and boots have been manufactured by means of the Goodyear Welted Method for long years and the thread stitched to attach the upper to the sole has often identical or similar color to the upper and sole. If so, in relation to yellow-colored shoes, a yellow stitch would be anything but distinctive.
Bearing in mind that the applied mark does not specify a color of the upper and the sole, the judge had a view that it is allowed to assess inherent distinctiveness of the position mark in relation to the shoes with a yellow thread, upper and sole and any colors.
Based on the foregoing, the Court found the position mark lacks inherent distinctiveness in relation to leather shoes and boots and shall be unregistrable based on Article 3(1)(iii) of the Trademark Law.
Acquired distinctiveness
The Court questioned relevance of the brand awareness survey that excluded consumers who had not purchased either leather shoes or boots in the past year. However, by taking account of an expert opinion that points out 15% shall be sufficient to admit distinctiveness of trade dress as a source indicator especially in fashion industry and the survey revealed there were over four times as many interviewees who selected Dr. Martens than Timberland (7.9%) from multiple choice, the judge ruled Dr. Martens’ yellow welt stitch has acquired a certain degree of recognition as a sign that the black leather shoes originate from the Airwair company.
In the meantime, the Court held there is doubt if the position mark would play a role in indicating its source even when used on a yellow or similar colored outsole or welt. As a matter of fact, Airwair has not taken actions against shoes having non-black outsoles and welts.
Given the applied mark does not restrict a color of shoes, a fact that Dr. Martens’ yellow welt stitch has played a role of source indication in relation to black leather shoes and boots is insufficient to find acquired distinctiveness of the appled mark and admit registration under Article 3(2) of the Trademark Law.
Obviously, the Court opens a gate to register Dr. Martens’ yellow welt stitch provided that a position mark consists of yellow stich and black upper and welt.
On April 25, 2023, the JPO Appeal Board dismissed an appeal filed by HERMES INTERNATIONAL, a French luxury fashion house, and upheld the examiner’s rejection of TM App no. 2018-133223 for a color mark of Hermes box due to lack of inherent and acquired distinctiveness.
[Appeal case no. 2021-13743]
Color mark of Hermes box
On October 25, 2018, HERMES INTERNATIONAL filed a trademark application for its iconic packaging colors, orange and brown (see below), as a color mark to be used on various goods in class 3, 14, 16, 18, and retail services in class 35 with the Japan Patent Office (JPO) [TM application no. 2018-133223].
On July 9, 2021, the JPO examiner rejected the applied mark based on Articles 3(1)(iii) and 3(1)(vi) of the Japan Trademark Law by stating that colors per se would not have any distinctive character. It has been inherently selected to produce aesthetic function or psychological effect on all goods and services. Because of this reason, relevant consumers at the sight of goods or services bearing the applied combination of colors, orange and brown are unlikely to recognize it as a source indicator.
Appeal against the examiner’s rejection by Hermes
Hermes filed an appeal against the rejection on October 8, 2022, and argued inherent distinctiveness as well as acquired distinctiveness of the color mark.
In addition to the evidence regarding the substantial use of Hermes box for the past six decades, in order to bolster the acquired distinctiveness of the packaging color per se, Hermes conducted market research that targeted men and women in their 30s to 50s with incomes JPY10,000,000 and above residing in 9 prefectures. According to the research report, 36.9% of the interviewees answered Hermes when shown three boxes in different shapes with the color mark. 43.1% chose Hermes from the ten options.
JPO Appeal Board decision
The Appeal Board did not find any error in the examiner’s findings. The Board held “Colors are selected to enhance the impression and aesthetics of goods and services. Some colors are obtained naturally or inevitably to ensure the function of goods or services. Therefore, colors are not recognized to indicate the origin of goods or services and distinguish them from competitors.
The Board finds no particular reason to treat the case differently in the circumstances that competitors have used similar combinations of colors including orange and brown in the relevant industries. If so, the examiner’s findings are adequate and would not error in applying Article 3(1)(iii) and (vi) of the Trademark Law.
With respect to the acquired distinctiveness of Hermes box, the Board questioned the relevance of the market research to the issue by stating that relevant consumers of the goods and service in question shall not be restricted to “men and women in their 30s to 50s with incomes JPY10,000,000 and above”. Presumably, 43.1% would be much lower if general consumers nationwide are included in the research. If so, it would be anything but unreasonable to find the applied mark has yet to acquire distinctiveness among relevant consumers.
Based on the foregoing, the Board accordingly upheld the examiner’s rejection and decided to refuse the color mark of the Hermes box under Article 3(1)(iii) and (vi) as well as 3(2) of the Trademark Law.
Hermes is entitled to file an appeal to the IP High Court by August 23, 2023.
In a series of Louboutin’s legal challenge to claim exclusive right over red soles, the Japan IP High Court, on the heels of the dismissal of Louboutin’s infringement claim on December 26, 2022, affirmed the JPO rejection to TM Application no. 2015-29921 for a red colored mark in sole and ruled Louboutin’s red soles shall be unregistrable under the Trademark Law on January 30, 2023.
[Court case no. Reiwa 4(Gyo-ke)10089]
Louboutin’s Red Soles
Fast on the heels of the introduction to register color marks in Japan, Christian Louboutin filed a trademark application for a color mark consisting of a red (Pantone 18-1663TP) colored in soles (see below) for use on high heels in class 25 on April 1, 2015 (TM App no. 2015-29921).
JPO Rejection
The JPO Appeal Board found the color mark perse lacks distinctiveness in relation to the goods in question by taking into account the fact that a lot of shoes with red-colored soles have been distributed by other shoemakers in Japan.
Besides, under the current trade practice, the Board considered it will inevitably cause a severe disorder and excessive restriction to competitors if it allows registration of a red color that has been freely used in the relevant industry to enhance the aesthetic appearance of shoes. Based on the foregoing, the JPO concluded the color mark shall not be registrable under Article 3(2) as well.
Louboutin brought the case to the IP High Court and appealed to cancel the JPO decision.
IP High Court decision
In the decision, the IP High Court expressed a view that a trademark consisting of a single color shall not be registrable unless it has acquired an extremely high degree of recognition to indicate a specific source as a result of substantial use to the extent that exclusive use of the color would not cause detrimental effect to the public in general.
In this respect, the court affirmed the JPO findings that a lot of heels with red-colored soles have been distributed by other shoemakers in Japan for years and negated the inherent distinctiveness of the red-colored mark.
In the assessment of acquired distinctiveness, the court found the survey that demonstrated 51.6% of the interviewees (3,149 females, aged from 20 to 50) having a domicile in three big cities (Tokyo, Osaka, or Nagoya) was insufficient to find acquired distinctiveness of the red soles among relevant consumers, assuming that the percentage would become lower if the survey targets more females residing in other cities nationwide.
Even if Louboutin’s red soles have become famous among consumers who have a high interest in luxury brands, the Court has no reason to believe that the red colored mark has acquired an extremely high degree of recognition as a source indicator to the extent that general public would tolerate its exclusive use on soles.
Based on the foregoing, the IP High Court affirmed the JPO decision and dismissed entire allegations by Louboutin.
Consequently, Louboutin’s legal challenge was decisively blown off by two IP High Court rulings unless the Supreme Court holds out its hand on Louboutin.
By order of December 26, 2022, the IP High Court ruled to dismiss an appeal taken by Louboutin against the Tokyo District Court ruling that denied a source-indicating function of Louboutin’s red soles.
[Appeal court case no. Reiwa4(ne)10051]
Appellant, Christian Louboutin SAS, brought an appeal against the Tokyo District Court ruling decided on March 11, 2022.
In May 2019, Louboutin sued Eizo Collection Co., Ltd., a Japanese company that produced ladies’ shoes with red-colored rubber soles, and sought a permanent injunction as well as damages in the amount of JPY4,208,000 under the Unfair Competition Prevention Law. The Tokyo District Court did not side with Louboutin by finding an insufficient reputation of Louboutin’s red soles perse as a source indicator and thus unlikelihood of confusion. See details here.
The IP High Court paid attention to the following factors to assess the likelihood of confusion in the case.
Relevant consumers of high-heels (women from their 20s to 50s) are most likely to try on multiple pairs of shoes at a physical store and select the ones that fit them prior to the purchase.
The market for women’s high heels can be divided into three categories: (1) luxury brand products, (2) affordable brand products, and (3) inexpensive no-name products. Undoubtedly, Louboutin’s high-heels priced at JPY80,000 and over are classified into category (1). In the meantime, Eizo’s shoes priced at JPY17,000 or less belong to category (2).
Every high-heel bears a brand name or logo on the insole so that consumers can easily distinguish its supplier.
E-commerce websites post not only images of ladies’ shoes but also the brand and condition of respective goods in advertisements.
Based on the foregoing, the judge found, irrespective of the resemblance in color on the outsole, no likelihood of confusion between both shoes.
As for the reputation of Louboutin’s red soles, the IP High Court admitted certain consumers may recognize the red soles as a source indicator of Louboutin, however, the judge questioned if the soles have acquired a remarkable reputation among relevant consumers in general based on the research targeted women, in their 20s to 50s accustomed to wearing high-heels, residing in major cities that revealed only 51.6 % of the interviewees answered Louboutin at the sight of a high-heel with red-colored sole and a fact that Louboutin has not been an exclusive supplier of red sole shoes for women.
On June 7, 2022, the Appeal Board of the Japan Patent Office (JPO) decided to reject a red color mark used on the soles of high heels by Christian Louboutin due to a lack of inherent and acquired distinctiveness.
[Appeal case no. 2019-29921]
Louboutin’s Red Soles
Fast on the heels of the introduction to register color marks in Japan, Christian Louboutin filed a trademark application for a color mark consisting of a red (Pantone 18-1663TP) colored in soles (see below) for use on high heels in class 25 on April 1, 2015 (TM App no. 2015-29921).
The JPO examiner refused the color mark based on Article 3(1)(iii) of the Japan Trademark Law by stating red color has been commonly used on shoes to enhance the aesthetic appearance and attract consumers of high heels. Red-colored heels and shoes have been widely distributed before the launch of Louboutin shoes in 1996 in Japan and even now. Under the circumstance and trade practice, the examiner had no reason to believe the color mark perse has acquired distinctiveness as a source indicator of Louboutin among relevant consumers in Japan. If so, the mark shall not be registrable under Article 3(2).
Louboutin filed an appeal against the refusal and disputed the inherent and acquired distinctiveness of Louboutin’s red soles as a color mark on October 29, 2019.
To bolster the acquired distinctiveness of the red soles, Louboutin conducted an online brand awareness survey to target 3,149 females, aging from 20 to 50 and having a domicile in Tokyo, Osaka, or Nagoya where Louboutin have stores. The survey demonstrated that 43.35% of the interviewees conceived of Louboutin in the answer to an unaided open-ended question (Q1). 53.99% associated the color mark with Louboutin in the answer to a closed-ended question, where it mentioned Louboutin along with other close competitors (Q2). Louboutin argued, that from the survey, it is obvious that Louboutin’s red soles have acquired distinctiveness among relevant consumers and shall be registered under Article 3(2) even though lacking inherent distinctiveness.
JPO Appeal Board decision
The Appeal Board affirmed the examiner’s findings and found the color mark perse lacks distinctiveness in relation to the goods in question by taking into account of fact that a lot of shoes with red-colored soles have been distributed by other shoemakers in Japan.
In the assessment of acquired distinctiveness, the Board pointed out a fact that more than half of the interviewees who live in the region where Louboutin stores are could not conceive of Louboutin in the answer to Q1. The survey was insufficient to admit acquired distinctiveness of the applied mark among relevant consumers nationwide, the Board found.
Even among the consumers who could associate the color mark with Louboutin, the Board had an opinion that as a matter of fact, they will be unable to distinguish Louboutin high heels from competitors’ shoes simply by means of red-colored soles without the aid of another source indicator, a wordmark “Louboutin”, used on the shoes given a lot of red-soled heels and shoes have been distributed by competitors as follows.
Besides, under the current trade practice, the Board considered it will inevitably cause a severe disorder and excessive restriction to competitors if it allows registration of a red color that has been freely used in the relevant industry to enhance the aesthetic appearance of shoes.
Based on the foregoing, the JPO concluded the color mark shall not be registrable under Article 3(2) as well.
On March 25, 2022, the Japan Patent Office (JPO) granted protection of a color mark that has been used on the package of the first and a long-selling Japanese instant ramen “Nissin Chicken Ramen”. It is the 9th case for JPO to admit registration since opening the gate to color mark in April 2015.
Nissin Chicken Ramen
In 1958, NISSIN FOODS founder Momofuku Ando invented the world’s first instant noodles: Chicken Ramen, paired with a rich broth made of chicken and vegetables.
Nissin Chicken Ramen is a long-selling Japanese instant ramen loved by many generations and considered the world’s first instant noodles. According to the company’s release, more than 5 billion packages of Chicken Ramen had been sold.
Color mark on Package
The JPO opened the gate to Non-Traditional trademarks, namely, color, sound, position, motion, and hologram, in April 2015.
On July 12, 2018, Nissin Foods sought for registration of color combination on the Chicken Ramen package on instant noodles in class 30.
JPO examiner raised his objection because of a lack of distinctiveness based on Article 3(1)(iii) of the Trademark Law. However, the examiner eventually granted protection by finding acquired distinctiveness of the color mark (TM Reg no. 6534071).
Low Success rate -1.6%
563 color marks have participated in a race for trademark registration at the JPO as of now (May 14, 2022). 9 color marks could manage to award registration.
It is noteworthy that none of them is a mark consisting of a single color.
A previous post relating to colormark is accessible from here.
HERMES INTERNATIONAL, a French luxury fashion house, is in a legal battle to register its iconic packaging colors, orange and brown, as a color mark in Japan.
Color mark of Hermes box
On October 25, 2018, HERMES INTERNATIONAL filed a trademark application for its iconic packaging colors, orange and brown (see below), as a color mark to be used on various goods in class 3, 14, 16, 18, and retail services in class 35 with the Japan Patent Office (JPO) [TM application no. 2018-133223].
Article 3(1)(iii) and 3(1)(vi)
The JPO examiner rejected the color mark under Article 3(1)(iii) and 3(1)(vi) of the Japan Trademark Law by stating that colors per se are unlikely to play a role in source indicator because they are frequently aimed to attract consumers in association with function or quality of goods and services. Because of it, relevant consumers at the sight of goods or services bearing the applied color would not see the combination of colors, orange and brown, as a source indicator.
Acquired Distinctiveness
Hermes argued acquired distinctiveness of the color combination as a result of substantial use on Hermes box for the past six decades from the 1960s onward.
A bottleneck is that the Hermes box contains its name “HERMES” and horse and carriage logo as a conspicuous source indicator. Hermes conducted market research to demonstrate the acquired distinctiveness of the packaging color per se. The research targeted high-income men and women in their 30s to 50s with incomes JPY10,000,000 and above. According to the research report, 36.9% of the interviewees answered Hermes when shown three boxes in different shapes with the color mark. 43.1% chose Hermes from ten options.
JPO Rejection
The JPO examiner did not find the research persuasive to support acquired distinctiveness among relevant consumers of the goods and services in question.
The examiner stated the relevant consumers shall not be limited to the high-income class. Besides, even among high-income consumers, more than half of them did not link the color to Hermes. From the research, it is doubtful if relevant consumers would conceive the color per se as a source indicator.
Based on the above findings, the examiner totally rejected the applied color mark under Article 3(1)(iii) and (vi) on July 9, 2021.
HERMES INTERNATIONAL filed an appeal against the rejection on October 8, 2021.
Japan opened the gate to Non-Traditional trademark, namely, color, sound, position, motion, hologram, in April 2015. It seems true that, beyond expectation, JPO has a significantly high hurdle to clear.
543 applications for color marks were filed with the Japan Patent Office (JPO) as of now (Nov 15, 2020). Among them, only 8 color marks are allowed for registration.
1. Tombow Pencil “MONO” (stationery)
2. Seven-Eleven (convenience store)
3. Sumitomo Mitsui Financial Group
(financial service)
4. Sumitomo Mitsui Financial Group
(financial service)
5. Mitsubishi Pencil “UNI” (pencil)
6. Mitsubishi Pencil “HI-UNI” (pencil)
7. Family Mart (convenience store)
8. UCC Ueshima Coffee (canned coffee)
All the registered color marks consist of more than two colors. JPO has yet to register a single case of color per se.
Most single-color marks are rejected due to a lack of distinctiveness and failure to demonstrate acquired distinctiveness. Surprisingly, 492 applications (90.6%) are already rejected or voluntarily withdrawn by the applicant.
Red Bull was unsuccessful in registering a combination of dark blue and silver on energy drinks in class 32.
Hermes also failed to register a three-color combination over various goods in class 14, 18, and 25.
43 applications are in review with the JPO as of now. Remarkably, Christian Louboutin fights for the appeal against the refusal of its iconic red-sole.
On 23 June 2020, the Japan IP High Court decided a case concerning a single color mark that was rejected for registration by the Appeal Board of the Japan Patent Office (“JPO”).
Single Color Mark
On 1 April 2015, Hitachi Construction Machinery (“Hitachi”) filed an application for trademark registration with JPO consisting of a single color per se, namely orange (Munsell: 0.5YR5.6/11.2) over the goods of hydraulic excavators, wheel loaders, road loaders, loaders [earch moving machines] in class 7, and rigid dump trucks in class 12 (TM Application no. 2015-29999).
TM Application No. 2015-29999
By the decision of 19 September 2019, the Appeal
Board of JPO declared the applied color mark to be refused in contravention of Article
3(1)(iii) and Article 3(2) of the Trademark Law, finding that the
graphic representation of the color mark constituted the “mere single orange
color, without contours”. If so, the mark is not inherently distinctive
and it is lacking acquired distinctiveness. In the course of the appeal trial,
Hitachi amended and restricted the designated goods to “hydraulic excavators”.
Article 3(2) is a provision to allow registration of any mark with which the relevant public will associate a particular source, manufacturer, or producer over time through the trademark owner’s usage.
On 30 October 2019, Hitachi appealed
against the JPO decision.
IP High Court decision
At the outset, the court stated it is inevitable
on the case concerning single color mark to take the interest of competitors who
deal with the goods in question into consideration since allowing one trader to
exclusively use this color would likely to cause unjust competitive practice in
form of monopolistic power of use in favor of one trader only.
From the produced evidence, Hitachi has allegedly used the color in question on hydraulic excavators and other construction machines since 1974.
Hitachi Hydraulic Excavators
Hitachi consecutively holds a 20% market share (14.6%) of hydraulic excavators over the past four decades in Japan. The research showed that approx. 95.9 % (185 out of 193) of traders in the construction industry were able to associate the color with Hitachi.
In the meantime, several competitors use similar color on hydraulic excavators
In the decision, the court found orange color is one of the colors commonly seen in our daily life. Besides, the Japan Industrial Standard (JIS) adopts orange as a safety sign-color aiming to prevent harm to the human body and damage to properties. Because of it, at construction sites, we often see several items colored in orange, e.g. helmets, rain suits, guard fens, work clothes, tower cranes, construction vehicles.
Hitachi Hydraulic Excavators have other colors, in fact, namely, a house mark “HITACHI” colored in white, buckets (attachments), cockpits, and crawlers colored in black. If so, the applied mark shall be capable of playing the role of source indicator in combination with these. Thus, the court would not find reasonable grounds to believe that the orange color per se acquired distinctiveness as a source indicator of Hitachi’s Hydraulic Excavators.
The court even suspected credibility of the research by finding that it narrowly targeted traders or consumers who own more than 10 hydraulic excavators, precisely it showed 36.8% in light of initial research number of targets, 502 persons, and the questionnaire ‘Please answer. What maker do you think hydraulic excavator is?” was insufficient to conclude acquired distinctiveness since its answer may simply suggest one of the colors of Hitachi’s Hydraulic Excavators.
Even if hydraulic excavators market in Japan is an oligopoly with five makers accounting for 90 % of the industry share, and the orange color has been consecutively used by Hitachi only, it does not mean every competitor agreed to refrain from using the color given orange has been used on various goods in the construction and agriculture industry in general.
Based on the foregoing, the court affirmed the JPO decision and dismissed Hitachi’s allegations in contravention of Article 3(1)(iii) and 3(2).
Thus, it is obvious that a very high standard of distinctiveness needs to be attached to a single-color mark if the same has to be claimed for trademark protection.
This case was a second court decision concerning a single color mark. The first case, Reiwa1(Gyo-ke)10119 ruled on March 11, 2020, also ended with the rejection of a single orange color mark in contravention of other ground, Article 3(1)(vi).
How JPO Examines Color Marks
As of now (12 July 2020), 543 color marks were applied for registration with JPO since the commencement of the Non-Traditional trademark application in April 2015. So far, only 8 marks are successfully registered. See below.
In sum, the registration rate of color mark is barely 1.5%! It is noteworthy none of a ‘single’ color mark has been granted to registration.
