Saturday, March 11, 2017

The First Registration of Color per se mark in Japan



Do the colors shown on the right remind you of any particular products or services?

In April 2015, Japan expanded trademark protection to cover a sound mark, motion mark, position mark, hologram mark, and color per se mark without delineated contours. Approximately 1,500 trademark applications for these new types of trademarks have been filed and more than 200 trademarks of them have been registered. However, no color per se mark has been registered yet, though 492 trademark applications were filed for it.

JPO announced on March 1st that they decided to grant trademark registration for two color per se marks. One is a color combination used by Seven-Eleven Japan for their fascia, and another is a color combination used by Tombow Pencil for their erasers. 

Granting exclusive right for a color per se mark has a significant impact on other companies’ businesses. Therefore, a color per se mark is not allowed to be registered until it becomes well-known. 

However, it is not so easy to make a color per se mark well-known. 

When it is a word mark, which is not required to be well-known for registration, a user of the mark can obtain a trademark right at first and then work to make it well-known under the protection of trademark law. 

On the other hand, a user of a color per se mark is not allowed to go through the same process to make it well-known, because it is required to be well-known first for registration. You may strategically use design right, which protects the shape, patterns or colors, or any combination thereof, of an article, to make the colors well-known for a particular article or product. Even so, we cannot expect many color per se marks allowed to be registered, due to a high bar of "well-known". 

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