YONEX Color Mark

Yonex Co., Ltd. filed a trademark application with the Japan Patent Office on September 6, 2019, for a mark that consists of a combination of blue (Pantone 2935C) and green (Pantone 355C) (color ratio 50%:50%), designating “sports equipment; badminton equipment” and other goods in Class 28 [TM App no. 2019-118815].

Rejection by JPO examiner

On July 27, 2022, the JPO examiner rejected the mark under Article 3(1)(iii) of the Japan Trademark Law, due to a lack of inherent distinctive character. Furthermore, while acknowledging that a certain number of traders and consumers recognize the color combination perse as an indicator of the applicant’s goods in view of the applicant’s extensive use of the mark on badminton shuttlecocks for years, and its leading market share, the examiner had an opinion that a significant number of people do not recognize it as a source indicator to distinguish from others. Accordingly, the examiner concluded that the mark does not satisfy the requirements to apply Article 3(2) since the applicant failed to demonstrate acquired distinctiveness of the mark in relation to the goods in question.

Subsequently, the applicant filed an appeal against the rejection on November 1, 2022, and then restricted the designated goods to “Shuttlecocks” in Class 28.

JPO Appeal Board decision

The JPO Appeal Board observed that the evidence submitted by the applicant would sufficiently demonstrate that the color combination has played a role in identifying the specific source of Shuttlecocks by taking into account the following facts.

1. The mark has been used continuously for over 48 years, since at least 1976, on Yonex Badminton shuttlecocks. The color combination appears on the applicant’s website, in product catalogs, internet articles, magazines, newspapers, and television programs. The shuttlecocks bearing the mark have been officially used at numerous international badminton tournaments, including the Olympic Games and World Championships.
2. Yonex shuttlecocks ranked first in the domestic market for 11 consecutive years from 2009 to 2019, with a market share of approximately 70% to 80% during that period.
3. According to survey results targeting 1,053 men and women aged 15 to 59 who currently play or have played badminton or tennis, 57.87% of the respondents who have played both tennis (including soft tennis) and badminton could associate the color combination with the applicant in the answer to an open or closed (multiple choice) question. For those who have experienced badminton, but not tennis, 56.59% could associate it with the applicant in either question.

Based on the foregoing, the Board found that the examiner erred in applying Article 3(2), and thus decided to register the color combination as a trademark.