Hermès calls for a color brand for the packaging of its products in Japan



Hermès seeks to reverse a finding from the Japanese branding organization, which determined earlier this year that the combination of orange and brown that can be found on the packaging of Hermès products is not necessarily an indicator of the brand. In a file filed with the Appeals Division of the Japanese Patent Office (“JPO”) this fall, the nearly 185-year-old French luxury goods brand pleads for registration of its colors orange and brown specific as a mark for use on packaging of products for cosmetics, jewelry, leather goods and retail services, among other goods / services, on the basis that Japanese consumers in fact associate the famous two-tone combination has only one source: its brand, which, allowing the orange and brown combo to function as a brand.

Hermès’ appeal stems from its unsuccessful argument that the combination of orange and brown on the product packaging has acquired distinctiveness in the minds of affected consumers, so they associate the packaging with of the colored product with the Hermès brand. To support her argument, Hermès’ lawyer said the brand has consistently used the color combination on the packaging of its products in Japan since the 1960s and cited investigative evidence it conducted with ” high-income men and women in their 30s and 50s ”. with revenues of 10,000,000 JPY ($ 87,951.91) and more, this shows that a portion of consumers associate colorful packaging with the Hermès brand.

The Hermès survey found that 36.9% of individuals pointed to the Hermès brand when they were shown three differently shaped boxes all bearing the orange and brown color mark. Meanwhile, 43.1% identified Hermès as the source when shown ten different box options in the brand’s colors.

Referring to Hermès’ investigation, a JPO examining lawyer was not convinced that the results were “persuaded to support acquired distinctiveness among relevant consumers of the goods and services in question”, in particular because Hermès limited the pool exclusively to high income earners. In addition to stating that the survey should have been applied to a group of consumers with a wider income range, the JEA reviewer determined that “even among high income consumers, more than half of them do not ‘have not linked color to Hermès “. According to the Hermès survey, a brand based in Osaka lawyer Masaki Mikami notes that “it is doubtful that affected consumers perceive color per se as a source indicator.”

In view of the above, the JPO Examiner refused to register the mark.

This isn’t the first time Hermès – or other brands – have faced the JPO’s reluctance to color-centric brands. JPO registered “multi-color marks” following the passage in April 2017 of a revision of the Japanese trademark law to allow the registration of marks composed exclusively of colors, according to Kimura’s lawyer & Partners, Takaaki Kimura. And speaking about the registrability of colors at the time of the revision of the law, the director of the trademark division of JPO, Sunao Sato, said that this “new type of mark should play a major role in the branding strategy. of the company as a means of disseminating various brands ”. as opposed to simply through word marks or logos.

Since then, the JPO has issued registrations for a number of other color-centric brands – from Sumitomo Mitsui Financial Group’s double greens to Mitsubishi Pencil’s “UNI” brown pencil color scheme, with a black stripe. Yet despite the change in law and a few subsequent registrations, there appears to be a greater tendency to reject color marks, with the JPO considering that many such marks “lack distinctiveness and [the applicants fail] to demonstrate acquired distinctiveness. For example, the JPO had previously opposed an application filed by Hermès for a tricolor combination mark to be used in classes 14 (jewelry), 18 (leather goods) and 25 (clothing). Meanwhile, Christian Louboutin has also faced opposition in Japan in its quest to register its famous unique red mark.

Any further indication of the difficulty that trademarks face when it comes to accumulating color-specific trademark registrations in Japan? The surprisingly slim success rate for color applications.

Mr Mikami told TFL as of November 15, 2020, 543 color mark applications have been filed with the JPO. As for the number of these requests which resulted in a registration: barely eight, which makes a “success rate” of 1.5%. It further notes that this trend, which has seen the existing eight color registrations issued exclusively to large companies, may “imply that the JPO considers color marks cannot be registered without a huge investment” by the filing party, which means that “small businesses and startups cannot take advantage of color brands as a branding tool at all, unlike other traditional and non-traditional brands eg name, shape, logo (design) , position, movement. ”


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