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.
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