Image: Hermès

Hermès has been handed a loss in the latest round of a bid to register its use of orange and brown on product packaging as a trademark in Japan. On the heels of the Japan Patent Office (“JPO”) refusing to register the mark on the basis that the color combination is not necessarily an indicator of source, the JPO’s Appeals Board rejected the Birkin bag-maker’s appeal, finding that Hermès selected its orange and brown-hued packaging “to enhance the impression and aesthetics of goods and services,” and that they are “not recognized to indicate the origin of goods or services and distinguish them from competitors.” Determining that the JPO did not err in refusing to register Hermès’ mark, the Appeals Board upheld the rejection and dismissed the appeal. 

The appeal from Hermès follows from its previously unsuccessful argument that the combination of orange and brown on product packaging has acquired distinctiveness in the minds of relevant consumers, making it so that they associate the colored product packaging with the Hermès brand. In furtherance of this argument, counsel for Hermès stated that the brand has been consistently using the orange and brown color combination on its product packaging in Japan since the 1960s and cited evidence from a survey of “high-income men and women in their 30s to 50s” with incomes of JPY10,000,000 ($87,951.91) and above that shows that a notable portion of consumers link the colored packaging to the Hermès brand. 

The Hermès survey revealed that 36.9 percent of the individuals pointed to the Hermès brand when they were shown three boxes in different shapes all bearing the orange and brown color mark. Meanwhile, 43.1 percent identified Hermès as the source when shown ten different box options in the trademark colors.

Reflecting on Hermès’ survey, an examining attorney for the JPO was not convinced that the results were “persuasive to support acquired distinctiveness among relevant consumers of the goods and services in question,” namely because the pool was limited exclusively to high-income individuals. In addition to stating that the survey should have been conducted among consumers with a broader range of incomes, the JPO examiner determined that “even among high-income consumers, more than half of them did not link the color to Hermès.” 

The JPO’s Appeals Board was similarly skeptical about the pool of surveyed consumers, stating that the relevant consumers at issue should not be restricted to “men and women in their 30s to 50s with incomes JPY10,000,000 and above.” With that in mind, Osaka-based trademark attorney Masaki Mikami recently stated that the Board found that the 43.1 percent figure would likely be “much lower” if a broader pool of consumers nationwide were included in the research. 

Against that background, the Board upheld the JPO examiner’s rejection and refused to register the mark in accordance with Article 3(1)(iii) and (vi) and Article 3(2) of the Japanese Trademark Act. Article 3(1)(iii) and (vi) prohibit the registration of marks that lack distinctiveness, and Article 3(2), which mandates that marks that lac k inherent distinctiveness may be registered only upon a showing of acquired distinctiveness. 

Hermès – which maintains trademark registrations for the orange hue of its product packaging in other countries, including in the United States and in France – may now opt to appeal to the IP High Court in Japan. 

THE BIGGER PICTURE: Hardly a unique outcome, the JPO’s treatment of color-centric marks has proven a challenge for the vast majority of the hundreds of brands that have lodged applications for registration that center on color. In the wake of first allowing for the registration of non-traditional trademarks, including color (along with sound, position, motion, and hologram) in April 2015, the JPO has refused nearly all of the applications.

As of March 2022, the JPO granted a registration for a color mark that has been used on the package widely-sold Japanese instant ramen “Nissin Chicken Ramen,” marking just the ninth instance of a color-centric mark being registered by the JPO. Among the small number of other registered color marks: The blue-white-black colors that appear on the packaging of Tombow’s “Mono” eraser; the orange, green, and red signage that adorns 7-Eleven’s stores; Sumitomo Mitsui Financial Group’s dual greens; and the color scheme of Mitsubishi Pencil’s maroon “UNI” pencil, complete with a black band.

In light of the low success rate when it comes to the registration of color marks and given a number of other examples of big-name companies – such as Christian Louboutin – being shut down in their quests to register color marks in Japan, ASAMURA IP P.C.’s attorneys state that “it is difficult to acquire distinctiveness [in color] or monopolize [color] in the view of public interest since color is a commonly used element in trademarks and designs.” 

(In an ongoing case over Louboutin’s red soles, despite the footwear brand’s arguments that it maintains robust rights in its red sole mark due to its consistent use of the red sole in the Japanese market for more than 20 years, as well as its sales success and marketing efforts, the IP High Court seemed at least somewhat persuaded by the fact that the red sole “has been commonly used on shoes in the Japanese market to enhance the aesthetic appearance and attract consumers.” In the brand’s separate – but related – push to obtain a registration for the red sole in Japan, Kimura & Partners’ Takaaki Kimura previously cited arguments put forth in oppos by women’s shoe manufacturers and retailers that registration for Louboutin’s red sole would “harm [their] vested interests” in the use of the red hue.)

As such, ASAMURA IP P.C.’s attorneys state that companies that are looking to amass color-focused registration in Japan should be aware that one of “the keys to registration may be to avoid applying for a single color.” To date, the JPO has refused to register any single-color marks. And beyond that, “to prove that the trademark has acquired a high degree of distinctiveness through” – an appropriately tailored – “survey.”