Is it difficult to register a color trademark?

(Image sourced from the Hermès website.)

Since 1960, Hermès has been using the distinctive orange color and the brown carriage logo on its packaging. They have made significant efforts to protect their brand. Initially, Hermès successfully registered the orange color used on their product packaging as a trademark in the United States and France. Then, in 2021, they applied to the Japan Patent Office with hopes of registering the color trademark for use on their products and service packaging.

However, after examination, the Japan Patent Office found that orange and brown could not serve as distinctive identifiers for consumers and lacked trademark distinctiveness, leading to the rejection of Hermès' application. Hermès appealed, arguing that they had been using the orange and brown color combination on their packaging since 1960 and that it had acquired trademark distinctiveness. They presented survey results targeting consumers aged 30 and above with high incomes as evidence. The survey results showed that 36.9% of respondents identified packaging with the orange and brown logo as Hermès products, and an additional 43.1% of respondents could easily recognize Hermès packaging among ten different trademark colors.

However, the Japan Patent Office maintained its position, stating that the survey evidence indicated that even among high-income consumers, over half did not associate the colors directly with Hermès. If all Japanese consumers were considered, the actual percentage recognizing Hermès packaging based on color would likely be lower than 43.1%. Therefore, the Japan Patent Office concluded that "the combination of orange and brown packaging colors by Hermès cannot serve as a distinctive identifier of Hermès brand products from those of other competitors" and rejected Hermès' application.

So, is it difficult to register a color trademark in Taiwan?

(Image sourced from the Intellectual Property Office.)

(Image sourced from the Intellectual Property Office.)

Under the current Trademark Act in Taiwan, Article 18 stipulates that a trademark can be composed of elements including color. Thus, the Trademark Act in Taiwan recognizes the possibility of registering color as a trademark.

For the examination of color trademarks, the Intellectual Property Office has issued "Non-Traditional Trademark Examination Guidelines" as the examination standard, which includes the following provisions:

Similar to other types of trademark applications, color trademarks which meet the requirements for registration must be capable of indicating the source of goods or services and enabling consumers to distinguish it from the goods or services of others. Typically, color trademarks, especially single colors, are perceived by consumers as having a decorative nature and do not possess inherent distinctiveness.

Regarding combination color trademarks, if they exhibit inherent distinctiveness due to the unique selection or distribution of colors, they have a higher likelihood of being considered inherently distinctive, and evidence of acquired distinctiveness may not be required for registration. However, it should be noted that combination color trademarks may still face challenges in demonstrating inherent distinctiveness compared to more standard graphical trademarks, and evidence of acquired distinctiveness may still be needed for registration.

Generally, obtaining acquired distinctiveness through use for a single color is more challenging compared to combination color trademarks. Unless the applicant can prove that the use of the single color for specific goods or services is highly exceptional or unusual, it may be difficult to obtain acquired distinctiveness.

To illustrate the difficulty of registering color trademarks, let's look at a case example:

(Disputed Trademark in Intellectual Property Court Case No.179 of the 101^st Judicial Year)

In the Intellectual Property Court's Judgment No. 179 of 101 Judicial Year, the disputed mark was a single purple color (Pantone 248C), filed by Mars, Incorporated in 2009. The Intellectual Property Office rejected the application, citing a lack of inherent and acquired distinctiveness. Mars, Incorporated, dissatisfied with the decision, claimed that the disputed mark was a unique color jointly created with Pantone, Inc. They filed an administrative lawsuit against the Intellectual Property Office.

The disputed mark lacks inherent distinctiveness:

The court determined that the disputed trademark consisted of a single purple color, which is a commonly used color and often used as a background color for product packaging. It was seen by relevant consumers as a decorative color rather than a distinctive identifier. The court noted that while there are various shades of purple, consumers generally perceive them as purple, and they do not usually carefully distinguish between them. Moreover, Mars, Incorporated admitted that there might be slight color variations due to differences in paper quality and printing equipment. Whether these color variations affected the uniqueness of the disputed mark or its ability to distinguish from other purple colors was questionable. Additionally, Mars, Incorporated's product packaging included other colors besides the disputed color, along with trademarks like "WHISKAS" and "偉嘉" placed prominently in the center, making consumers recognize these words as source identifiers. In comparison, the disputed mark appeared more like a decorative pattern or background design. Therefore, the court concluded that the single purple color of the disputed mark was not sufficient to make relevant consumers recognize it as an indicator of the source of goods.

The disputed mark also lacks acquired distinctiveness:

To prove the acquired distinctiveness of the disputed mark, Mars, Incorporated presented several items of evidence. However, the court pointed out that the evidence provided by Mars, Incorporated often used the silver tabby cat graphic, the purple cat-shaped border graphic, and the white "WHISKAS" or "偉嘉" Chinese characters together with the disputed mark. This gave consumers the impression that the text was the source identifier while the color served as the background. Mars, Incorporated did not provide evidence to show that if these text or cat-related graphics were removed, consumers would still recognize their products based solely on the single purple color. Therefore, the court considered that Mars, Incorporated's evidence for acquired distinctiveness was not sufficiently convincing.

As a result, the court ruled against Mars, Incorporated in this case. However, it's worth noting that this case could still be subject to further appeals.

In summary, while color trademarks meet the requirements for registration in Taiwan, they can be challenging to obtain, especially for single colors. Combination color trademarks may have a better chance of registration if they exhibit inherent distinctiveness, but acquiring distinctiveness through use can be difficult, as evidenced by the relatively low number of color trademarks registered in Taiwan compared to the number of rejected applications.