In March 2022, the Japanese Patent Office (JPO) published a report*¹of research conducted on trademarks that include the names of people. The JPO is considering revising the Trademark Law to make it easier to register a brand name including the name of a person as a trademark. Currently, it is generally difficult to register a trademark that includes a name. In order to register a trademark of a business name that is identical to the name of the business owner, it is necessary to obtain the consent of all the persons who bear the name in order to protect their moral rights. In the fashion industry, a designer's name is often used as the brand name. However, in recent years, there have been a number of cases in which trademark registrations containing the name of the designer have been rejected. For example, when Ken Kikuchi, an accessory designer, attempted to register a logo containing the brand name "KEN KIKUCHI" as a trademark, the JPO refused to grant the trademark registration. The Intellectual Property High Court upheld the JPO's decision and ruled against his appeal to the Supreme Court.
Japanese Trademark Application 2017-69467
Upon receipt of the application of a name trademark, the JPO checks the White Pages, telephone directories, and web pages for any other people with the same name as that in the trademark application. In the case of the above-mentioned application, the trademark is an alphabetical mark "Ken Kikuchi", and consent is required from people whose name has the same pronunciation, even if the names are written in different Japanese characters. As "Ken Kikuchi" is a relatively common name, it is practically impossible to register "Ken Kikuchi" as a trademark under the current practice.
On the other hand, in the EU, the US, China, and South Korea, trademarks that include names are allowed to be registered under certain conditions. In Japan, such obstacles have been pointed out since there is a tendency to hinder a company's brand development. In light of the above, the JPO deliberated relaxation of the regulation on trademark registrations containing the names of other persons in September, November and December 2022 at the 9th, 10th, and 11th Trademark System Subcommittee of the Intellectual Property Sub-Commission*².
The Subcommittee considered imposing "a certain degree of name recognition" of the "name" as a requirement on the other party in Article 4-1-8 of the Trademark Law. In addition, the Subcommittee discussed and raised the issue of whether to impose a requirement to consider "the applicant's circumstances (e.g., whether there are legitimate reasons for filing the application)" with respect to trademark applications containing names of other persons.
The following are hypothetical examples of "applicant's circumstances" which should be considered.
- The relationship between the applicant and the name contained in the trademark. (e.g., whether the name in the trademark is the applicant's own name, the name of the founder or a representative of a store, or the name of a store already in use by the applicant).
- The applicant's purpose and intention. (Whether or not the applicant intends to harass others. Whether or not the purpose of registering the trademark including the name of another person in advance is to make them purchase the trademark, etc.)
With regard to requiring a certain degree of name recognition of the "name" on the part of another person and taking the applicant's circumstances into consideration, the discussion of the Subcommittee makes it clear that they are moving towards easing the registration requirements.
Reference:
*¹ JPO FY 2021 Project of Industrial Property Rights System Comparative Study in Different Countries, "Report on Research and Study Concerning Trademarks Containing the Names of Other Persons"
https://www.jpo.go.jp/resources/report/takoku/document/zaisanken_kouhyou/2021_04-summary.pdf [Japanese only]
*² 9th, 10th and 11th Subcommittees on Trademark System, Intellectual Property Sub-Commission, Industrial Structure Council
https://www.jpo.go.jp/resources/shingikai/sangyo-kouzou/shousai/shohyo_shoi/index.html
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