Interesting news story in the colour-mark world this week, where the Japan Patent Office (JPO) finally made the decision to reject the application by Kawasaki to register (as a mark) the green colour used on their motorcycles - around ten years after the application was filed[1].
A key point was the fact that the market research - targeting only motorcycle license holders - was found to have been insufficient to establish acquired distinctiveness for the colour. Also of note is the fact that the colour was used on less than 40% of Kawasaki motorcycles sold since 1975. Of additional relevance is the IP High Court decision that "a mark consisting of a single colour is not registrable unless it has acquired an extremely high degree of recognition as indicating a particular source as a result of substantial use, to the extent that the exclusive use of the colour would not cause detriment to the public in general".
Since (sole) colour marks became registrable in 2015, 589 applications have been made to the JPO, but with only 11 successfully registered (7 of which comprise colour combinations, and with the other 4 - all shades of brown - assigned to Mitsubishi Pencil Co. Ltd.) (Figure 1).
%20Screenshot%202025-05-02%20122155.jpg)
Figure 1: Table of all colour marks successfully registered with the JPO
In this instance, the Kawasaki shade of green in question was defined in terms of its RGB values (conveniently, as it makes it amenable with my proposed framework for colour comparisons![2,3]) - [105,190,40] - with application sought in Class 12 (application no. 2015-30667).
Also noted by the Appeal Board in the case was the fact that "competitors also manufactured motorcycles with a similar green colour" (Figure 2).
Figure 2: Competitor motorcycles using 'similar' shades of green
How similar is 'similar' (I hear you ask)? --
The six shades of green used on the motorcycles in the images in Figure 2 can be defined as the following RGB values (according to a 'colour picker' tool for images, applied to what appears visually to be a typical representative area of the main shade of green in each case - as far as such a thing exists in these images):
A. [6,163,3]
B. [132,194,117]
C. [135,192,68]
D. [16,212,71]
E. [193,209,1]
F. [96,217,72]
From these values, it is possible to construct a matrix showing how similar to each other are each of these pairs of shades (in terms of the 'distances' between them in RGB units) (Table 1).
Table 1: RGB 'distances' between each of the shades of green listed above
Overall, therefore, these colours can generally be seen to be actually 'not that similar'; of the shades of green deemed close enough to be potentially problematic, the furthest shade from that used by Kawasaki is the colour of the motorcycle in image A (top left) of Figure 2, actually 109 RGB units distant (or, objectively, only 75.3% similar) (Figure 3).
Figure 3: Comparison of Kawasaki green and the shade of green used in image A (top left) of Figure 2
As such, it seems fair to say that a reliance on subjective opinions, in cases where objective measurements could be applied, continues to dominate trademark considerations (and, potentially, any associated disputes). In this specific case, the ultimate decision may not have been affected, but it seems reasonable that the IP industry should perhaps start to better utilise these types of metric where they are available.
References
[1] https://www.worldtrademarkreview.com/article/jpo-refuses-register-kawasakis-green-colour-mark
This article was first published on 2 May 2025 at:
No comments:
Post a Comment