The IP High Court Upheld the JPO’s Decision to Refuse Registration of a Trade mark Consisting Solely of a Single Color

Concerning the plaintiff’s application for a trademark consisting solely of a single color, which was refused for lack of distinctiveness by the JPO, the IP High Court determined that the trademark lacks inherent distinctiveness and has not acquired distinctiveness as a result of use by the plaintiff (IP High Court, January 24, 2023 (Case number: 2022 (Gyo-Ke) No. 10062)).

Background
Mitsubishi Pencil Co., Ltd. (the “Plaintiff”) filed an application for the following single-color trademark (the “Trademark”) with the JPO and the JPO rejected the application. In response to the rejection, the Plaintiff filed a request for a trial and received a trial decision of refusal on the ground of lack of distinctiveness (the “Trial Decision”). Therefore, the Plaintiff filed a lawsuit with the IP High Court to cancel the Trial Decision.

The Trademark (App. No. 2015-29864)

Detailed description of the Trademark:
The Trademark applied for registration consists solely of the color “DIC Color Guide PART 2 (4th Edition) 2251”.

Designated goods
Class 16：Pencil (other than colored pencil)

Judgment

1. Inherent distinctiveness

Even if the Trademark is used for pencils (excluding colored pencils), consumers and traders recognize that the colors are used merely to enhance the image, beauty, etc. of the products (pencils). Therefore, the Trademark consists only of a mark indicating, in a common manner, the characteristics of the designated goods, pencils (colors such as the color of the pencil’s exterior).

2. Acquisition of distinctiveness

In order for a trademark consisting solely of a single color, which falls under the trademark listed in Article 3(1)(iii) of the Trademark Act, to fall under the category of “a trademark that, as a result of its use, enables consumers to recognize the goods or services as those pertaining to the business of a certain person” as provided in Article 3(2) of the Trademark Act, the trademark must be widely recognized by consumers as indicating goods or services as a result of its use pertaining to the business of a certain person. In addition, it is reasonable to conclude that there must be circumstances in which allowing the exclusive use of the trademark by a particular person is permissible from the viewpoint of public interest.

The Plaintiff began manufacturing and selling pencils called “uni” in 1958, and “Hi-uni” in 1966, and now also manufactures and sells pencils called “uni star” in addition to uni and Hi-uni. The Plaintiff’s products (uni, Hi-uni, and uni star) have the colors pertaining to the Trademark as the base color on most of the six sides of the pencils, and black (for uni and uni star) or black and gold (for Hi-uni) on the back end of the pencils, and on one of the six sides of the pencil, “MITSUBISHI”, “uni”, “Hi-uni”, “uni star”, and other gold-like characters are engraved on one of the six sides of the pencil. Since the 1960s, numerous media have published articles about Plaintiff or Plaintiff’s products and advertised Plaintiff’s products bearing the Trademark. The Plaintiff had a 53.7% share of the market for pencils in fiscal year 2015, and followed by Tombow Pencil Co., Ltd. with a 27.4% share. With respect to the sales of Plaintiff’s products, from 2001 to 2015, the actual sales of “uni” products ranged between 12 million and 15 million pencils per year, and between 2 million and 3 million Hi-uni pencils per year.

Questionnaires were conducted among the following 1200 persons, (a) mothers between the ages of 20 and 59 whose children used pencils and (b) men and women between the ages of 20 and 69 who themselves use pencils (100 men and women in their 20s, 30s, 40s, 50s and 60s each (1,000 total), and 200 mothers). The questionnaire showed a “red beans color image” corresponding to the Trademark and asked, “The image you just saw is the color we use for a certain brand of pencils. When you saw the image, what brand did you think of? Please feel free to write your answer in the space provided below.” As a result, 43.4% of all respondents recalled the name of the Plaintiff or its brand name (e.g., Mitsubishi Pencil, uni, etc.).

According to the above facts, including the fact that the Plaintiff’s products have been mentioned in articles in newspapers, etc., and advertised in various media for a considerable period of time, the Plaintiff’s products are considered to have a considerable degree of recognition among consumers. However, the Plaintiff’s goods bear not only the trademark but also other colors and characters, and in consideration of the fact that the colors similar to the Trademark, including Bordeaux and Burgundy, are widely used for writing implements including pencils, consumers who see the Plaintiff’s goods will not recognize that the Plaintiff’s goods belong to the Plaintiff’s business from the trademark alone. Rather, it is reasonable to assume that the black or black and gold colors combined with the Trademark and the gold-like letters that clearly indicate that the Plaintiff’s product is Mitsubishi Pencil’s uni series will be recognized as the plaintiff’s products pertaining to the Plaintiff’s business.

In the pencil market, the Plaintiff and Tombow Pencil Co., Ltd. have a combined market share of over 80%. Even though the range of choice of answers in the questionnaire in this case could be considered relatively narrow as above, less than half of all respondents recalled the Plaintiff’s name or its brand name when asked what brand of pencils they thought of when they saw the Trademark alone. Therefore, the number of consumers who recall the Plaintiff or the uni series from the Trademark alone is not that large, even if limited to those who are relatively familiar with pencils.

Considering the above, the Trademark has not become widely recognized by consumers through its use as indicating that the goods are those pertaining to the Plaintiff’s business, and has not acquired distinctiveness through its use. Therefore, the Trademark does not fall under the trademark stipulated in Article 3(2) of the Trademark Act. There is no error in the trial decision to the same extent.

Comments
The Plaintiff already owns trademark registrations consisting solely of multiple colors for pencils as follows, but in this case, the registrability of a trademark consisting of a single color was at issue.

At present, it seems that there is no case in Japan where a trademark consisting solely of a single color has been registered. As this judgment pointed out, the uni pencil of the Plaintiff is a pencil that has been used by many consumers for many years, but even so, it was determined not to have acquired distinctiveness.

This conclusion is one example of the difficulty in obtaining registration of a trademark consisting solely of a single color in Japan. This decision takes into account that products using a single color are accompanied by a direct indication of the origin of the product (company name, brand name, product name, etc.). Since it is unlikely that only a single color will be used as the source of the goods, it may be difficult for a single color to acquire distinctiveness as a result of use.

In this regard, even in this judgment, the Plaintiff argued that “the origin of the goods is not recognized solely by the word mark on a narrow portion of the goods, but by the Trademark of this application, which constitutes a large portion of the goods”. Certainly, for inexpensive and small products such as pencils, there may be cases where consumers do not pay attention to the words, but recognize the colors that constitute the majority of the product as a sign of origin and conduct transactions. However, as mentioned above, this judgment found that the Trademark has not acquired distinctiveness as a result of use, because of the presence of colors and letters other than the Trademark on the Plaintiff’s goods, etc.

Trademarks consisting of only a single color are registered in foreign countries. We believe that there is room for a trademark consisting of a single color to be registered in Japan as well, but in light of this judgment, it may be difficult for such a trademark to be registered. The fact findings and grounds for this judgment are considered to be important for future practice, and therefore, we have introduced this Judgment.