Can You Trademark a Color in Japan? Protecting Non-Traditional Marks Like the Purple Cap of a Sauce Bottle

For decades, trademarks were primarily thought of as words, logos, or symbols. However, as branding strategies evolve, businesses increasingly seek to protect less conventional indicators of source, such as sounds, motions, and even single colors. In 2014, Japan amended its Trademark Act to explicitly allow for the registration of these "new types" of trademarks, including marks consisting solely of color. But how easy is it to secure such protection, particularly for a single color, like the distinctive purple cap of a popular sauce bottle? And what happens when names, especially those of founders, are used as trademarks, or when competitors use terms descriptively that happen to be registered marks?

The Challenge of Registering Color-Only Trademarks in Japan: The Distinctiveness Hurdle

The fundamental requirement for any trademark registration in Japan is distinctiveness (Trademark Act Article 3(1)) – the mark must be capable of distinguishing the applicant's goods or services from those of others. Color-only trademarks face a significant uphill battle in meeting this requirement, primarily under Article 3(1)(iii), which precludes registration of marks that consist solely of an indication, used in a common way, of (among other things) the quality or characteristics of goods.

Why Single Colors Often Lack Inherent Distinctiveness:

1. Limited Palette and Competition Concerns (Dok占 Tekiōsei - Aptness for Monopoly): There is a finite spectrum of colors. Granting one entity an exclusive right to a single color for a broad category of goods could unduly restrict competition. Other traders may legitimately need or wish to use that color for functional reasons (e.g., red for danger signals), for common aesthetic appeal, or because it's naturally associated with the product (e.g., green for mint-flavored products). The Supreme Court of Japan, in a decision on April 10, 1989 (though predating color-only mark registration, it discussed the principle for descriptive marks), highlighted that marks which everyone needs to use for necessary indications are generally not suitable for monopolization by one party. This principle strongly applies to basic colors.
2. Consumer Perception: Consumers are not generally accustomed to perceiving a single color, in isolation and without association with a specific shape or logo, as an indicator of the commercial origin (brand) of a product. A color is often seen as merely ornamental or a feature of the product itself, rather than a trademark.
3. Guidance from JPO Examination Guidelines: The Japan Patent Office (JPO) Examination Guidelines for Trademarks reflect these concerns. For color-only marks, the guidelines indicate that colors are generally considered non-distinctive under Article 3(1)(iii) if they fall into categories such as:
   • Colors naturally occurring for the goods (e.g., black for charcoal).
   • Colors that are functional or indispensable for the goods (e.g., black for car tires due to carbon black content).
   • Colors commonly used for aesthetic appeal in that product market (e.g., silver for mobile phones).
   • Colors that could be commonly used for goods in that market, even if not currently widespread (e.g., the guidelines once cited yellow for refrigerators as an example).
   • Simple color patterns or background colors used decoratively.

Applying to a Hypothetical: The Purple Sauce Cap
Imagine a company produces a very popular sauce, and a key visual cue for consumers is its distinctive purple bottle cap. If the company applies to register the color "purple" per se (a color-only mark, without any defined shape or outline) for "sauces," it would likely face an initial refusal under Article 3(1)(iii). While purple might not be a "natural" color for sauce or a "functional" color for a cap, it would likely be considered a color that other sauce manufacturers could legitimately wish to use for packaging aesthetics or product line differentiation. Thus, without further proof of acquired distinctiveness, the single color "purple" would probably be deemed inherently non-distinctive for sauces.

Overcoming Non-Distinctiveness: Acquired Distinctiveness Through Use (Trademark Act Article 3(2))

Even if a mark is initially considered non-distinctive under provisions like Article 3(1)(iii), it can still achieve registration if the applicant can prove that, as a result of extensive and continuous use, consumers in Japan have come to recognize that specific mark (in this case, the color alone) as indicating that the goods or services originate from their particular business. This is known as "acquired distinctiveness" or "secondary meaning."

The High Bar for Color-Only Marks:
Proving acquired distinctiveness for a single color is exceptionally challenging. The applicant must demonstrate that the color itself, divorced from any particular shape, logo, or word mark it might have been used with, functions as a standalone source identifier in the minds of a significant portion of the relevant consuming public.

• JPO Examination Guidelines on Acquired Distinctiveness for Colors: The guidelines acknowledge that acquired distinctiveness is possible if the evidence shows that the color portion alone has come to be recognized as a trademark, even if it was historically used alongside other elements. The example given is a pencil case where the entire product is blue, and evidence shows consumers recognize that specific blue for that pencil case as indicating its source.
• Nationwide Recognition: Since a Japanese trademark registration grants nationwide rights, the acquired distinctiveness must generally be proven on a nationwide basis. Localized fame, while perhaps supporting a claim for unfair competition protection in that area, is usually insufficient for a national trademark registration based on Article 3(2). If our hypothetical purple-capped sauce is famous primarily in "City A" but its purple cap is also mentioned in national guidebooks, this might contribute to an argument for broader recognition, but it would need to be substantial.
• Specificity of Recognition for Color: A critical point for color-only marks is whether consumers recognize the color per se as the trademark. In our sauce example, if consumers identify the product as "the sauce in the bottle with the purple cap," is their recognition tied to the abstract color "purple," or to the specific combination of "purple + cap + bottle shape"? If it's the latter, an application for the color "purple" alone might be deemed too broad, as the acquired distinctiveness pertains to a more complex trade dress. The JPO might suggest that an application for the color purple as applied to a cap of a specific shape (which would be a combination or position mark involving color) might be more appropriate if the evidence supports that narrower recognition.
• Scope of Goods/Services: If acquired distinctiveness is proven for a specific product (e.g., "Worcestershire-style sauce for okonomiyaki"), does this automatically justify registration for a broader category like "all sauces"? Not necessarily. While courts and the JPO show some flexibility if the goods are very closely related and share consumer bases and trade channels (e.g., an IP High Court decision on January 24, 2013, for "Azuki Bar" ice confectionery; an IP High Court decision on April 21, 2011, for a perfume mark where distinctiveness was found to extend to closely related cosmetics), strong evidence is needed for each designated good or service claimed.

Trademarking Personal Names: The Case of a Deceased Founder

Another aspect of trademark law involves the use of personal names, particularly those of company founders. Suppose the sauce company in our example also seeks to register the name of its deceased founder, "Mr. Original," as a standard character trademark for "sauces."

• Article 4(1)(viii) – Names of Living Persons: This article prohibits the registration of a trademark containing the name, portrait, signature, etc., of another existing person, except with their consent. This provision does not apply to deceased persons.
• Article 4(1)(vii) – Public Order and Morality: This is a general clause precluding registration of trademarks liable to contravene public order or morality. It can be invoked in certain situations involving names of deceased individuals, especially famous ones. The JPO Examination Handbook on names of historical figures indicates that use or registration could violate public order if it exploits the person's fame unfairly, damages their honor, or misleads the public, considering factors like the person's renown, public perception, the applicant's relationship to the person, and the purpose of the application. A well-known case involved an attempt to register a mark associated with Salvador Dalí, which was refused on these grounds as an attempt to free-ride on the artist's fame without connection.
• Application to a Founder's Name: For a company applying to register the name of its own deceased founder for the very products the founder established, a refusal under Article 4(1)(vii) is highly unlikely. Such a use is generally seen as legitimate and not contrary to public order, especially if the applicant is the successor business (e.g., run by the founder's son, as in a hypothetical scenario). Article 4(1)(vii) is not typically used to resolve internal family or private disputes about the "right" to use a family name in business, unless the registration would genuinely harm broader public interests or ethical norms.

Beyond Registration: The Concept of "Trademark Use" in Infringement

Even if a trademark is registered, its enforcement against third parties depends on how that third party is using an identical or similar sign. Not every use of a word or symbol that happens to be a registered trademark constitutes infringing "trademark use" (shōhyōteki shiyō).

The Japanese Trademark Act, in Article 26(1)(vi) (introduced in the 2014 amendments, codifying prior case law), states that the effects of a trademark right do not extend to a registered trademark (or a similar mark) that is "not used in a manner that enables consumers to recognize the goods or services as those pertaining to the business of a particular person." In simpler terms, if the third party's use is not perceived by consumers as indicating the commercial source (brand) of their goods or services, it's not an infringing trademark use.

Examples from Japanese case law illustrate this:

• Using terms like "For Brother" or "ブラザー用" (for Brother) on packaging for compatible ink ribbons for Brother-brand printers was held not to be trademark use of the "Brother" mark, but rather a descriptive indication of compatibility (Tokyo District Court, June 23, 2004).
• A company using the phrase, "Reproducing the traditional taste created by Mr. Original" on its sauce bottle (where "Mr. Original" is a registered trademark of another company, the original maker). If this competitor prominently displays its own brand name, and the phrase featuring "Mr. Original" is presented in a clearly descriptive and subordinate manner (e.g., "Our Brand Sauce – faithfully made using the recipe of Mr. Original"), consumers are likely to understand "Mr. Original" as referring to the historical originator of the recipe or style, not as the trademark indicating the commercial source of the competitor's product. Such a use would likely not be "trademark use" and thus not infringement.
• The overall impression, context, size, and placement of the mark in relation to other information on the product or advertising are crucial in determining if it functions as a source identifier.

Conclusion: Strategic Pathways for Non-Traditional Marks and Descriptive Uses

The ability to register new types of trademarks like color-only marks has expanded the branding toolkit in Japan. However, securing registration for such marks, particularly single colors, remains a significant challenge due to the high threshold for proving inherent or acquired distinctiveness. Applicants must be prepared to present compelling evidence that the color itself has become a recognized badge of origin for their specific goods or services in the minds of Japanese consumers nationwide.

When it comes to using personal names, especially those of founders, as trademarks, registration is generally feasible for legitimate successor businesses, with public order concerns arising primarily in cases of unconnected third parties attempting to exploit the fame of widely known deceased individuals.

Finally, in the realm of trademark enforcement, the "trademark use" doctrine is a critical defense. Not all instances of a third party using words or symbols identical or similar to a registered mark will constitute infringement. If the use is purely descriptive, referential, or otherwise does not function to identify the commercial source of the goods or services to consumers, it will likely fall outside the scope of the trademark owner's exclusive rights. This underscores the importance of analyzing how consumers actually perceive marks in the marketplace.