On November 15, 2024, Kawasaki Heavy Industries, Ltd. dropped their nine-year fight with the Japan Patent Office (JPO) over a green color mark used on the Kawasaki motorcycles.
Narrow gate to color mark registration
On April 1, 2015, the JPO commenced registration of marks consisting solely of a color or colors. To date, 585 color marks have been filed with the JPO, and only 11 have been granted registration. This equates to a success rate of just 1.9%.
Kawasaki Green
On the very first day, Kawasaki Heavy Industries, Ltd., famous for sports and racing bikes in Japan, filed an application for a color mark consisting of light green (R105, G190, B40) represented on fuel tank as shown below in connection with motorcycles (cl.12).[TM App no. 2015-30696]
JPO decision
As anticipated, the JPO examiner rejected the mark due to a lack of inherent and acquired distinctiveness on April 18, 2022 based on Article 3(1)(iii) of the Japan Trademark Law in seven years after the initial filing.
In the refusal decision, the examiner found from the produced evidence that Kawasaki has used the applied color on fuel tank of motorcycles since 1998, however, more than 70% of the Kawasaki motorcycles in average have a fuel tank painted in other color.
The results of the interview, which targeted men and women aged 16 to 79 who own motorcycles or a license to drive one, indicate that 54.7% of license holders and 67.5% of bike owners were able to recognize Kawasaki from the color. In this respect, the examiner had a view that the results were not persuasive to find acquired distinctiveness of the applied mark given Honda, Yamaha, Suzuki, and Kawasaki, the four major motorcycle manufacturers, have held a near monopoly of the market for years, and each manufacturer is known to have its own distinctive color.
Accordingly, the examiner held the applied mark shall not be registrable under Article 3(2) of the Japan Trademark Law.
Kawasaki filed an appeal against the examiner’s rejection on July 19, 2022 and argued acquired distinctiveness of the color “green” to indicate a source of the Kawasaki motorcycles. After two years of dispute with the JPO Appeal Board, Kawasaki voluntarily withdrew the appeal on November 15, 2024.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM