Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

The Japanese trademark law stipulates that color is regarded as a component of a trademark.  Then, how is a color treated or handled in the Japanese trademark system?  The followings are overview of color-related matters in the Japanese trademark law.

1. Color alone or a combination of colors

Under the current law, color is not an independent component.  Color alone or a combination of colors cannot be registered as a trademark.  Color should be combined with at least one other element: character, figure or symbol to be registrable.

However, color without outline (namely, color alone or a combination of colors) is planned to be a subject of protection by an amendment to the Trademark Law which is expected to be submitted to the Diet in a few years.  We will report the detail when the amended law is effective.

2. Description regarding color (color claim)

No description regarding color is required when a trademark in an application for trademark registration includes a color even if the color is a material element.
A color applied to a trademark is automatically a material element of the trademark regardless whether the applicant would like to claim it or not.

Black and white are also regarded as colors under the Japanese trademark law.  However, the background color of a specimen in an application for trademark registration does not form part of the trademark.

3. Trademarks with different colors

(1) Similarity of trademarks
Similarity of trademarks is basically judged by three elements; the sound, the appearance and the meaning in the Japanese trademark practice.

If a color applied to a trademark affects these elements and overall impression of the trademark, then the color will be considered as a factor that decides whether the trademark is similar to other trademarks.

For example, the red color in “ GYAHOO “might affect the similarity between “YAHOO!” so that “GYAHOO” and “YAHOO!” might be deemed similar to each other.   On the contrary, the blue “AIGI” and the black “AIGI” would be deemed similar to each other where the colors do not affect the similarity between the two marks.

(2)Identicalness of trademarks

If a trademark is similar to a registered trademark and different only in color(s) from the registered trademark, then the trademark is regarded being “identical with” the registered trademark. (Article 70).
This article applies to identicalness in terms of non-use, license or others.

However, please note that Article 70 applies only to a “registered” trademark.  Therefore, amendment to color(s) of a trademark at the examination stage changes the gist of the trademark, which results in dismissing the amendment.

4. Trademark claimed in International Application

A trademark of the international trademark application should be handled differently from regular Japanese trademark applications.  This is because it must be rigorously determined whether the trademark of an international trademark application and the trademark of a basic registration or basic application are identical, and the trademarks must be identical in constitution and form.

Therefore; 

 1) When the trademark of a basic registration or basic application has color as a constituent element, the trademark of the international trademark application must be of an identical constitution and form, and the color of the trademarks must be identical; and 

 2) When the basic registration or basic application claims color as a characteristic of the trademark, the corresponding international trademark application must claim the same.
In addition, when color is not claimed in the basic registration or basic application, but is claimed in the corresponding international application, the trademark of the basic registration or basic application must be in the colors claimed or consist of a combination of the colors claimed.

Please refer to the Trademark Examination Manual A2.04 for further information.