December 20, 2024

Trademark News

The IP High Court denied registrability of Hermès orange box as a color trademark due to lack of acquired distinctiveness among general consumers.

Hermès International (the “Applicant”) filed a trademark application for a mark consisting of a combination of colors orange and brown used on the brand’s packaging boxes. The application covered various goods and services including perfumes, jewelry, handbags, stationery and retail services for those goods. The Japan Patent Office (the “JPO”) rejected the application due to lack of distinctiveness, and the Applicant filed an appeal with the IP High Court. Although the court recognized that the packaging box with the subject colors was familiar to consumers of luxury goods and those interested in them, it dismissed the appeal holding that it was likely the word mark “Hermès” and carriage logo that made consumers associate with the brand, and the mere combination of the colors did not necessarily evoke the brand (IP High Court Decision dated March 11, 2024 [Case No. 2023 (gyo-ke) 10095]).

Background

The Applicant, a French luxury design house Hermès International, filed a trademark application with the JPO for the following mark consisting of a combination of a color orange (RGB: 221, 103, 44) applied to the whole surface of a box and a color brown (RGB: 94, 55, 45) applied to perimeter of the top of it (the “Mark”, App. No. 2018-133223). The application covered goods in Classes 3, 14, 16 and 18 and retail/wholesale services in Class 35.

The JPO Examiner rejected the application due to lack of distinctiveness. The applicant filed an appeal with the JPO Board of Appeal, but it was dismissed for essentially the same grounds as in the examination. Although the Applicant claimed that the Mark had acquired distinctiveness through use, the JPO Board of Appeal found that the word mark “HERMES” and the horse carriage logo were widely known to consumers and concluded that it was likely those marks are associated with the commercial origin of the Applicant’s goods and services. In assessing awareness of the Mark among consumers, the Applicant relied on a questionnaire survey showing that 36.9%-43.1% of participants who were shown images of boxes in the subject colors answered “Hermès”. The JPO Board of Appeal, however, criticized the survey as covering a limited portion of the public and showing insufficient awareness of the Mark. Accordingly, the appeal was dismissed. Against the decision of the JPO Board of Appeal, the Applicant filed an appeal with the IP High Court.

Court Judgment

In contrast to the JPO Board of Appeal’s view, the court acknowledged that the Mark had been used as an icon of the brand and held that the box bearing the Mark had become recognized as originating from the Hermès brand widely at least among consumers of luxury goods and those interested in them. Not only did the court acknowledge that the brand had become famous, but it found that the box bearing the Mark had been used by the Applicant intentionally and strategically to make it the brand’s icon which symbolizes elegance as well as dignity. Further, the court regarded results of the questionnaire surveys* submitted by the Applicant as evidence that the Mark was widely known to the brand’s targeted consumers.

However, taking into account that the application intended to cover goods such as watches, key rings, stationery, rucksacks, card cases and umbrellas which are not only offered by luxury brands but also are affordable commodities for general consumers, the court found that the relevant consumers should not be limited to those of luxury goods, but should include all general consumers. Based on this view, the court denied the Applicant’s claim that the Mark, apart from the word and device marks, has become recognized as the commercial origin of the Hermès brand among consumers of the designated goods and services. As to the questionnaire surveys, they were commented as not appropriate since they did not target all types of consumers.

In conclusion, the court denied the acquired distinctiveness of the Mark and dismissed the Applicant’s appeal.
* The Applicant conducted another questionnaire survey after the decision by the JPO Board of Appeal. Whereas the first survey was targeted at those in the upper income group, the second one targeted, without income condition, at those who are interested in bags, jewelry and watches or cosmetics and perfumes and purchased them within the past 6 months. Questions and results in the second survey were similar to the first one.

Comments

Since non-traditional marks including a color mark were recognized under the Japanese Trademark Act, the JPO and courts in many cases have denied the acquired distinctiveness of not only a color per se but a combination of colors on the ground that colors are used for the purpose of enhancing the appearance of goods and image of services and does not function as a source identifier apart from a word or device mark used together with it. Another concern has also been raised that granting protection to a color that is commonly used in relation to the designated goods/services may allow the proprietor to obtain an unfair competitive advantage against others.
Unlike previous decisions and judgments, the court in this case more focused on the fact that the Applicant has used the combination of colors intentionally and strategically to make it an icon that embodies the brand’s essence. This view originates from the background of introduction of non-traditional marks that brands have more various promotional strategies than before. Also, the court pointed out as obiter dictum that granting protection to the Mark should not necessarily allow monopoly on the color(s) and the chilling effect should not be overestimated.
While there still lies a difficulty in obtaining protection for a color mark, it is noteworthy that the court paid more attention to the brand strategy when assessing the widely-known status of the mark.

Written by: Ms. Tomoko Honami (Attorney at Law)