table of contents
Design Applications and Color
(1) It is now possible to apply for a trademark based on color alone, but can designs also be applied for?
The Trademark Act was revised in 2015 to protect "color trademarks only." A color trademark is a trademark that consists of only a single color or a combination of multiple colors without an outline.
Tiffany's "Tiffany Blue" is a famous single-color trademark. Tiffany is trying to build an effective brand with the color "Tiffany Blue." In addition to this, there are other trademarks that consist of a combination of multiple colors, such as Tombow Pencil's trademark for the "combination of blue, white, and black."
Since such trademarks are not limited in shape, the scope of trademark rights can be broadened.
So, just like with trademarks, can a "design consisting only of color" be granted a design right? Unfortunately, a "design consisting only of color" is not protected by the Design Act, so it is not possible to obtain a design right.
(2) Subject matter protected by the Design Law
A design under the Design Act that is protected by the Design Act must be "a creation of the shape, etc., of an article or building, or an image."
"Article" refers to a tangible movable property that is circulated in the market. "Shape, etc." refers to the shape, pattern, color, or a combination of these.
The Design Act stipulates that an article and its shape, etc. are inseparable. Therefore, the creation of only the shape, etc., separate from the article, for example the creation of only a pattern or color, is not recognized as a design of the article.
(3) Designs of different colors: Judgment on similarity
(3-1) Other than image designs: similar designs
The shape and pattern of an item are created by the designer, but unless the color constitutes a pattern, it is not a created part, but rather a selected part in which one color is chosen from a large number of colors. Since many different color variations are available for normal products, color is considered to be less likely to attract the viewer's attention than shape and pattern. Therefore, color is generally considered to have less impact on the judgment of similarity than shape and pattern. Therefore, unless there are special circumstances, designs with different colors are considered to be similar designs.
(3-2) Image designs: There may be cases of dissimilarity
Images for icons, etc., are designed to be easy to understand, and are not likely to have complex shapes, so it is expected that there may be cases where the dissimilarity is determined (the range of similarity is interpreted narrowly) due to differences in components other than the shape, such as color. Therefore, in the case of an image design with a simple shape, it may be determined to be dissimilar depending on the presence or absence of color, so it is preferable to first obtain rights for the image that will actually be used.
(4) Scope of rights
So, when it comes to designs of the same object or shape, which has a wider scope of rights: monochrome or color?
A color design is a design that is limited to a certain color, for example, a design that is colored blue is limited to the color blue. As mentioned above, designs with different colors are in principle included in the range of similarity, but if the design is colored in a different color and the aesthetic impression is too different, the possibility of it being considered dissimilar cannot be denied.
On the other hand, a monochrome design is a design that does not have any color restrictions, so it can be white, blue, red, or yellow, for example.
Therefore, monochrome drawings are generally considered to have a wider scope of rights, and design applications are also filed with monochrome drawings, unless there are special circumstances.
(5) Considerations regarding color in designs: Other matters
(3-2) Color modification and lack of ease of creation (Article XNUMX, Paragraph XNUMX of the Design Act)
A design created by changing the colors or the order of the colors of a prior design is merely a "minor modification" of the original design. For this reason, it does not meet the requirement of non-creatability (Article 3, Paragraph 2 of the Design Act) and cannot be registered as a design.
(3-2) Parts and colors of a prior design (Article XNUMX-XNUMX of the Design Act)
A part of a design means a closed area contained in the appearance of a design disclosed as a design related to a prior application. Therefore, the examiner will not treat a conceptually separated shape, pattern, or color, which is a component of a design, as a part of the design. For example, if a design disclosed as a design related to a prior application is a design consisting of a combination of the shape and pattern of an article, etc., it refers to a part of the entire design in that combined state, and the shape excluding the pattern and color will not be treated as a part of the design.
(5-3) Unification by brackets and colors
If multiple designs are unified by color, it may be possible to register a set of designs on the basis that the overall design is unified by a certain color linked to the shape or pattern.
(5-4) Priority and Color
In order for a design filed in Japan to be recognized as identical to a design filed in a first foreign application in terms of claiming priority, the shape, pattern, or color of the article, etc. related to the designs of both designs must be identical. If the colors of the designs are different, they are considered different designs, and in principle, the effect of claiming priority will not be recognized.
However, for example, if the drawings in the first application include color but the description states that no rights are claimed for the color, the two applications will be deemed to be identical when granting or denying priority.
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