JPO announces its first decisions to register color marks

by Yusuke Inui (KUBOTA, Japan)

On March 1, 2017, the Japan Patent Office (the “JPO”) issued a press release stating that it had issued its first decisions to register trademarks that merely consist of colors. This is the first time that the JPO has decided to register color marks since it started receiving trademark applications for color marks in April 2015.

The 2014 Amendment to the Trademark introduced the so-called new types of trademarks to the Japanese trademark system. The JPO started receiving application for such trademarks on April 1, 2015.

Since then, the JPO granted registration for other new types of trademarks, such as sound marks, movement marks, hologram marks and position marks. However, until recently, the JPO never granted registration for trademarks that merely consist of colors.

The color marks that the JPO decided to register are shown below.

Yusuke Inui

In both cases, the JPO Examiner issued a provisional refusal based on lack of distinctiveness, but the applicant overcame the provisional refusal by showing secondary meaning. (Both combinations of colors shown below are quite well-known to Japanese consumers, and it is likely that most Japanese consumers would easily associate these combination of colors with the goods/services of the respective trademark owners.)

While it is notable that the JPO finally decided to register color marks, it should also be noted that both marks consists of combination of multiple colors, and that neither of them is a mark that consists of a single color. Although it is theoretically possible to register a trademark that consists of a single color, an applicant for such a mark would be required to show secondary meaning, and it is likely that the hurdle for showing secondary meaning would be very high in case of single color marks.