【Trademark Act★★】A case in which the Intellectual Property High Court upheld a decision for rejection on the application for a trademark consisting only of the combination of a shade of orange (RGB combination: R221, G103, B44) for the entire box and a shade of brown (RGB combination: R94, G55, B45) for its upper perimeter, denying the acquisition of the ability to distinguish one’s own and other goods and services through the use and advertising of packaging boxes (commonly known as “orange boxes”) bearing the trademark applied for in relation to the designated goods and services in general, including goods and services not using the trademark applied for, based on the ability of general consumers to recognize the goods or services, and maintaining in its decision that Article 3, Paragraph 2, of the Trademark Act was not applicable.

Intellectual Property High Court Decision of March 11, 2024 (Case No. 10095 [Gyo-ke] 2023―Presiding Judge Miyasaka)

◆Main text of the case

【Summary of the Judgment】

1. Regarding acquisition of distinctiveness of one’s own goods and services by using the trademark applied for

When considering general consumers, who are assumed to be consumers of the trademark as applied for in light of the designated goods and services in question, it cannot be immediately concluded that the “HERMÈS” brand has become recognizable through the use and advertising of the packaging boxes (commonly known as “Orange Box”) bearing the trademark as applied for. Furthermore, because the results of an awareness survey are also inappropriate in that they do not cover a wide range of general consumers, and because some of the designated goods and services do not use the trademark applied for, it is not possible to recognize the acquisition of the distinctiveness.
 
2. Regarding the issue of adaptability for exclusive use

The trademark as applied for is not specified by the mere combination of shades of orange and brown, but by having has a unique configuration combining the shade of orange of the entire box and the shade of brown around the upper perimeter of the box. Therefore, the granting of such an exclusive use does not result in an exclusive use of color simply, nor does it recognize the actual conditions of trade such that the configuration in question is widely used by a large number of businesses. In addition, even if the registration of the trademark is granted, the depressive effect on competition should not be overestimated, because in practice, the manner of use similar to that of the trademark often constitutes unfair competition under Article 2, Paragraph 1, Item 1 of the Unfair Competition Prevention Act.

【Comments】

1. Regarding acquisition of the distinctiveness of one’s own goods and services by using the trademark as applied for

In previous court rulings, the courts have denied the applicability of Article 3, Paragraph 2, of the Trademark Act to trademarks consisting only of a single color (without outlines), due to the emphasis on the public interest requirement (adaptability for exclusive use), and to avoid unreasonable restrictions on free choice and the use of color by other business entities. On the other hand, examples of registered trademarks consisting solely of colors are based on combinations of multiple colors are shown in Table 1. Under such circumstances, in Judgment Summary 1, the court denied the acquisition of the distinctiveness through the use of the trademark consisting only of the combination of a shade of orange (RGB combination: R221, G103, B44) for the entire box and a shade of brown (RGB combination: R94, G55, B45) for its upper perimeter, on the basis of general consumers in relation to the designated goods and services in general, including goods and services that are not in use with regard to this trademark without denying the adaptability for exclusive use itself, as described in Judgment Summary 2.
 
2. Regarding the issue of adaptability for exclusive use

In Judgment Summary 2, the court affirmed the adaptability for exclusive use of the trademark as applied for, in consideration that the trademark is not merely a combination of two colors but has the characteristic of containing elements similar to a combined trademark in a three-dimensional shape and color where each color is arranged all around the box and around the upper perimeter of the box, and that while there are no actual circumstances of transactions in which a trademark with such characteristics is widely used by any other business, such use often falls under Article 2, Paragraph 1, Item 1 of the Unfair Competition Prevention Act.

 
Table 1. Registered trademarks consisting solely of multiple colors

Table 2. Trademarks consisting solely of a single color

Applicant	Trademark as Applied For	Court Case denying Registration
LIFULL Co., Ltd.	A trademark consisting only of a shade of orange (RGB combination: R237, G97, B3)	Intellectual Property High Court Decision of March 11, 2020 (Case No. 10119 [Gyo-ke] 2019―Presiding Judge Otaka)
Hitachi Construction Machinery Co., Ltd.	A trademark consisting only of a shade of orange (Munsell value: 0.5 YR 5.6/11.2)	Intellectual Property High Court Decision of June 23, 2020 (Case No. 10147 [Gyo-ke] 2019―Presiding Judge Takabe)
Hitachi Construction Machinery Co., Ltd.	A trademark consisting of a shade of orange (Munsell value: 0.5YR5.6/11.2) on booms, arms, buckets, cylinder tubes, carbody housing, and counterweights of hydraulic excavators	Intellectual Property High Court Decision of August 19, 2020 (Case No. 10146 [Gyo-ke] 2019―Presiding Judge Otaka)
MITSUBISHI PENCIL COMPANY, LIMITED	Consisting solely of the DIC Color Guide PART 2 (4th Edition) 2251	Intellectual Property High Court Decision of January 24, 2023 (Case No. 10062 [Gyo-ke] 2022―Presiding Judge Honda)
Christian Louboutin	A trademark consisting solely of a shade of red (PANTONE 18-1663TP) applied the sole of women’s high-heeled shoes	Intellectual Property High Court Decision of January 31, 2023 (Case No. 10089 [Gyo-ke] 2022―Presiding Judge Kanno)

【Keywords】Article 3, Paragraph 2, of the Trademark Act, Acquisition of Distinctiveness through Use, New Type of Trademark, Trademark Consisting Solely of Colors, Trademark Consisting Solely of a Combination of Colors, Combined Trademark of Three-dimensional Shape and Color, Adaptability for Exclusive Use, Hermes, Orange Box

※ The contents of this article are intended to convey general information only and not to provide any legal advice.

Kei IIDA (Writer)

Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)

Contact information for inquiries: k_iida☆nakapat.gr.jp (Please replace ☆ with @.)