Aug 16, 2022
Japan: Examination Criteria for Trademarks Consisting solely of Color, as Seen in the Opinion
Asamura Patent Office Chinese Attorney
Zheng Xinjia
Examination Criteria for Trademarks Consisting solely of Color, as Seen in the Opinion
――Color Trademark of the Chicken Noodle
I. Ninth trademark consisting solely of colors registered
On March 25, 2022, Nissin Foods Holdings, Inc. (hereinafter referred to as “the Applicant”) has registered a trademark consisting solely of colors (hereinafter referred to as “Color Trademark”) (Registration Number 6534071). The designated product is instant noodles. This is the ninth case of a color trademark registration.
From the progress information, we can find that during the application process the examiner issued notice of reasons for refusal, including other types of notices, twice. In response to the notices, the applicant submitted written opinion four times. In this issue, we will look at the examination criteria for color trademarks from the main opinion submitted by the applicant.
Ⅱ. Reasons for Refusal
Firstly issued reason for refusal by the Patent Office was：
[……Colors used on products or product packaging, including combinations of colors, are often chosen to enhance the attractiveness of products, etc., and are not recognizable as signs that indicate the origin of the products and distinguish between the products themselves and other products. In this case, it is reasonable to conclude that even if the trademark is used on the designated product pertaining to this application for trademark registration, the trademark is merely an indication of the characteristics of the goods in a commonly used manner, as the trademark is recognized by the traders and consumers who come into contact with it as representing colors are normally used or can be used on goods or product packaging.]
Therefore, the reason for refusal clause is Article 3. (1). (iii)①.
Ⅲ. Opinion
In response to above reason for refusal, the applicant submitted a written opinion consisting of three parts: (1) The trademark pertaining to the application for trademark registration (hereinafter referred to as “the trademark”); (2) The applicant and “Chicken Ramen”; (3) The trademark has already acquired distinctiveness through use.
In respect of the trademark, the applicant explained in detail the colors and the proportions of the combination of colors in the trademark and pointed out the originality of the trademark.
Regarding the applicant and “Chicken Ramen”, it was stated that “Chicken Ramen” is an extremely well-known trademark for instant noodles and occupies an important position in the applicant’s business, and the results of a questionnaire survey showing a high brand recall rate in instant noodles were also cited.
As to the fact that the trademark has already acquired distinctiveness through use, the results of a questionnaire survey were mainly cited, in which the recall rate was over 80% when product was designated and 60% when no product was designated. It was also claimed that the trademark had been used in advertising activities such as TV programs and newspaper advertisements, awards, related books, support activities, goods, festivals, etc. other than instant noodles.
Ⅳ. Conclusion
Since color is a commonly used element in trademarks and designs, it is difficult to acquire distinctiveness or monopolize in the view of public interest. As a result, it often falls under Article 3. (1). (iii) ①of Japanese Trademark Law. Therefore, in order for registration to be granted, Article 3. (2) ②should be applied. Specifically, the key point is the submission of questionnaire survey results showing that the trademark has been well-known to consumers.
In addition, in view of the semi-permanent monopoly of color, the designated goods and services should be limited to those goods and services that have the distinctiveness of the product or service and a wide designation is not permitted.
Furthermore, the colors themselves and the proportions of the color combinations must be described accurately and without contradiction.
From the registered cases, the color trademarks registered have acquired sufficient distinctiveness among consumers mainly through use, while currently limited to those consisting of combinations of colors.
After several amendments after the written opinion was submitted, the trademark was registered.
In contrast, the following color trademark failed to be registered in the appeal against the examiner’s decision of refusal in June 2022.
（Trademark）
Applicant of this trademark was a French company named Christian Louboutin and the description of the trademark in question was “red color applied to the sole portion of high-heeled shoes for women”. During the appeal hearing, applicant also presented the results of the questionnaire survey. 43.35% of the respondents recalled and answered the brand in an open-ended format, and 53.99% of the respondents recalled and answered the brand when the open-ended responses and the optional responses were combined. It was judged that less than 50% of the respondents could recognize the brand, and more than half of the respondents could not recall relationship with the brand. As a result, it was not recognized that the brand is widely recognized among consumers.
In addition, there is the fact that a large number of goods (shoes) with the same characteristics as the trademark in question, with the soles colored red, are manufactured and sold by many traders. Therefore, it was judged that allowing a specific entity to exclusively use a trademark consisting of only a single color, such as the trademark in question, would be detrimental from the public interest standpoint (monopolistic adaptability).
Yet, the Red Sole color trademark has been widely registered outside Japan.
Several applications for single color trademark registration have been filed in Japan, but currently registration remains zero. It should be recognized that there is a very high hurdle to registration.
As a conclusion, when applying for a color trademark, the key to registration may be to avoid applying for a single color and to prove that the trademark has acquired a high degree of distinctiveness through a questionnaire survey.
Annotationː
➀ Article 3(1)
Any trademark used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:
……
(iii)consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, shape (including shape of packaging; the same applies in Article 26 paragraph (1), items (ii) and (iii)), the method or features including time of production or use, quantity, price, or, in the case of services, the location of provision, quality, articles to be used in the provision, efficacy, intended purpose, modes, method or features including time, quantity or price of provision
……
➁ Article 3(2)
Notwithstanding the preceding paragraph, a trademark that falls under any of items (iii) through (v) of the preceding paragraph may be registered if, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person.