Can A Single Colour Acquire Protection?

In 2015, Hitachi filed an application for a colour mark registration with JPO consisting of a single colour – an unassuming orange – over its hydraulic excavators. Hitachi holds a 20% market share of hydraulic excavators since the past forty years in Japan. A questionnaire-survey showed that approximately 96% of traders in the construction industry were able to associate orange to Hitachi (though doubts were placed on the survey’s credibility). That said, other competitors were also using similar orange colours on their excavators.

The IP Court’s Findings

On the question of protection to Hitachi for a single colour, orange, the IP court discussed the following –

  • The Japanese Industrial Standards regard orange as a customary colour.
  • Orange colour is often used to prevent accidents and is common in accident prevention equipment such as helmets, rain suits, fences, work clothing, etc.
  • The applicant, Hitachi, uses orange in much of its other goods as well, and it may be regarded by many as Hitachi’s corporate colour – thus the colour has a weak connection with hydraulic excavators specifically.
  • Other parties and competitors commonly use the colour orange in the use of hydraulic excavators – the use is not exclusive. Even though 90% of the domestic market is occupied by 5 companies and none of the other four companies use the orange colour – there exist other smaller and foreign companies which do use the colour.
  • The colour of the goods in so far as hydraulic excavators are concerned, does not play a large role in the selection and purchase of them. Traders or users are more concerned about the function and reliability of such goods.

The IP Court’s Decision

The JPO Appeal Board’s decision was upheld by the court and Hitachi’s appeal was dismissed. The court held that the mark should not be registered since it has not acquired distinctiveness.

Colour Marks In Japan

Merely 1.5% of all applications for colour marks have ever been approved – none of which are single colour marks. Moreover, till date, only eight registrations for colour marks have been approved since the commencement of non-traditional trademarks in 2015. Thus, registrability of colour marks in Japan remains extremely tough.

Author: Suyash Bajpai, a student of National Law University Odisha, Cuttack, intern at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

Leave a Reply

Archives

  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010