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 Surprisingly, 492 applications (90.6%) are already rejected or voluntarily withdrawn by the applicant.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.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM