1. Whether or not a trademark has acquired distinctiveness as a source indicator under Article 3, Paragraph 2 of the Patent Act must be determined by taking into consideration, in a comprehensive manner, the circumstances of its use such as the period of use and areas of use of the trademark, the amount of sales and scale of business of the relevant product, and the period and scale of advertising; the existence of other entities’ products which adopted a mark identical with or similar to the trademark; the importance of the role played by the trademark when customers identify and select the relevant product, and the like. Further, when determining as to whether a trademark consisting solely of a single color has acquired distinctiveness through use, it is required to give consideration to public interest to avoid putting unreasonable restrictions on the freedom to use colors by other entities which provide the same product as the designated goods of the trademark.
2. Under the circumstances described in (i) through (iv) below, the following color trademark which consists solely of orange (Munsell value: 0.5YR5.6/11.2) without contours is not considered to have acquired distinctiveness under Article 3, Paragraph 2 of the Trademark Act even if the trademark has been used for a long period of time for its designated goods, hydraulic excavators.
(i) The color is generally adopted in construction sites etc.
(ii) A considerable number of entities which use a color similar to the above-mentioned color trademark exist in the field of hydraulic excavators, or construction machines whose customers are common to hydraulic excavators, or the field of agricultural or forestry machines for which hydraulic excavators are used.
(iii) In transactions of construction machines including hydraulic excavators, functions and reliability of the machines are considered, and the role played by colors used on machine bodies cannot be said to be important.
(iv) It is required, in light of public interest, to avoid putting unreasonable restrictions on the freedom to use colors.
1.With respect to criteria for determining whether a trademark has acquired distinctiveness as a source indicator through use under Article 3, Paragraph 2 of the Trademark Act, the first sentence of the summary of Judgment 1 was based on a generally accepted theory, or the theory of a comprehensive consideration, and the second sentence of the summary of Judgment 1 indicated that, in the case of a trademark which consists of a single color without having no specific contours, it is required to give consideration to public interest to avoid putting unreasonable restrictions on the freedom to use colors by other entities (Suitability for Monopoly), consistent with previous court decisions (the IP High Court Decision of March 29, 2007 <Case No. 2006 [Gyo-ke] 10441> “お医者さんのひざベルト” (“Doctor’s Knee Belt”); the IP High Court Decision of October 31, 2007 <Case No. 2007 [Gyo-ke] 10050> “DB9”; the IP High Court Decision of March 27, 2008 <Case No. 2007 [Gyo-ke] 10243> “AJ”, etc.).
2. Regarding the summary of Judgment 2, the Court denied, based on the summary of Judgment 1, that the color trademark consisting solely of orange (Munsell value: 0.5YR5.6/11.2) without contours has acquired distinctiveness through use. In this regard, examples of registered trademarks which consist solely of color(s) are listed below, and it should be noted that all of which consist of a combination of a plurality of colors. Registration of a trademark consisting solely of a single color without contours is likely to be difficult even under Article 3, Paragraph 2 of the Trademark Act unless such a single color is unusual in the relevant field.
|Trademark Holder||Trademark Registration No.||Registered Trademark|
|Tombow Pencil Co., Ltd.||No.5930334||
|SEVEN-ELEVEN JAPAN CO.,LTD.||No.5933289||
|Sumitomo Mitsui Financial Group, Inc.||No.6021307||
|Mitsubishi Pencil Co., Ltd.||No.6078470||
|FamilyMart Co., Ltd.||No.6085064||
|UCC Ueshima Coffee Co., Ltd.||No.6201646||
【Keywords】Article 3, Paragraph 2 of the Trademark Act, acquisition of distinctiveness through use, a non-traditional trademark, a color trademark, a trademark only consisting of a single color without contours, freedom to use colors, public interest, suitability for monopoly, Hitachi Construction Machinery
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Kei IIDA (Writer)
Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)
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