タグ: Name of a living individual

Is Mr. Benjamin Brown around?

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The Japan Patent Office (JPO) reversed the examiner’s rejection to TM App no. 2022-13396 for word mark “Benjamin Brown” in classes 25 and 28 based on Article 4(1)(viii) of the Trademark Law by stating the mark would not be completely identical with a full name of the person “Benjamin Brown” alive.

[Appeal case no. 2023-4642, decided on November 9, 2023]

Benjamin Brown

Japanese company, Kabushiki Kaisha Pmang, filed trademark application for a word mark “Benjamin Brown” for use on various goods in class 25 and 28, especially golf wear, shoes and other gold items, with the JPO on February 7, 2022.

On December 19, 2022, the JPO examiner rejected the mark in contravention of Article 4(1)(viii) of the Japan Trademark Law since “Benjamin Brown” corresponds to a full name of person, an Israeli professor, researcher of Judaism and Jewish thought, lecturer at the Department of Jewish thought at Hebrew University.

Article 4(1)(viii)

Article 4(1)(viii) is a provision to prohibit registration of trademark that contains the representation or name of any person, famous pseudonym, professional name, or pen name of another person, or famous abbreviation thereof.

Notwithstanding the provision, the article is not applicable where the applicant could obtain a written consent from the person.

The Supreme Court of Japan ruled the article has aimed to protect personality rights of a living individual. Therefore, the article is not applicable when the person is no longer alive.

The applicant filed an appeal against the rejection on March 20, 2023 and argued that registration of the mark “Benjamin Brown” in relation to goods of classes 25 and 28 would never cause damages of personal right to Israeli professor at Hebrew University.

JPO Appeal Board decision

The Appeal Board found that the applied mark “Benjamin Brown” shall be conceived as a coined word in its entirety. Relevant consumers are unlikely to associate it with a full name of particular person.

It is uncertain if “Benjamin Brown” is a full name of the professor or alive (!). Besides, the Board can’t find any reason to believe that his name has been highly recognized among consumers in Japan.

If so, the applied mark shall not be subject to Article 4(1)(viii). Since the examiner made an error in applying the article, it should be cancelled in due course, the Board decided.

Japan: Trademark Law Revision Act promulgated on June 14, 2023

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The Japan Trademark Law Revision Act of 2023 (Act No. 51) passed Congress on June 7 and was promulgated on June 14. Hot topics of the revision are:

1. An individual can register his/her name as a trademark to the extent that it has acquired a substantial degree of recognition among relevant consumers of the designated goods or services

Current law provides that the name of a person is unregistrable if there is another person of the same name unless obtaining his/her consent (Article 4(1)(viii)).

Current – Article 4(1)(viii)

Trademark shall not be registered if the mark contains the portrait of another person, or the name, famous pseudonym, professional name, or pen name of another person, or famous abbreviation thereof (except those the registration of which has been approved by the person concerned)

By virtue of the revision, in the event that the name of a person has been widely recognized as a source indicator of his/her business, the individual can register his/her name without the consent of another person of the same name.

Revision – Article 4(1)(viii)

Trademark shall not be registered if the mark contains the portrait of another person, or the full name of another person (limited to that has been widely recognized as a result of actual use on goods or services of the person’s business), the name, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof (except those the registration of which has been approved by the person concerned), or the name of another person that would not meet with requirements specified by government ordinance.

It should note above revision does not apply to the name of a company (legal entity). A company can’t register its name without the consent of another company of the same name if exists.

 2. A mark can be registered even if it is subject to Article 4(1)(xi) which prohibits registration of any mark identical or similar to earlier trademark registration, on the condition that the earlier trademark owner gives consent and there is no likelihood of confusion with the earlier mark as a matter of fact.

For long years, the JPO has not considered, in the course of trademark examination, consent from earlier trademark owners as a pass to open the gate for registration.

Due to a rigid examination practice, the applicant and earlier trademark owner, regardless of mutual agreement to give consent to trademark registration in Japan and other jurisdictions, were all the way obliged to temporally transfer their trademark right to either party and then take action to assign it back after the JPO granted registration of the applied mark.

By virtue of the revision, the applicant can overcome the refusal based on a conflict with earlier trademark registration in Japan by filing a letter of consent from the earlier trademark owner and the JPO examiner believes the co-existence of both marks would not cause confusion.

New – Article 4(4)

Trademark shall not be rejected under Article 4(1)(xi) provided that the applicant obtains consent from the owner of the cited mark under the article and it is unlikely to cause confusion with the cited owner and its exclusive or non-exclusive licensee when used on goods or services designated under the application.

It should note the JPO still has the discretion to reject or cancel trademark registration even after the filing of a letter of consent where they find a likelihood of confusion or actual confusion (Article 52-2).

When does the revised act come into force?

The revised act is set to become effective within a year from the promulgation date.

Fashion Designer Lost Trademark Dispute Over His Name

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On July 29, 2020, the Japan IP High Court ruled to dismiss an appeal by Kabushiki Kaisha Soloist, founded by Takahiro Miyashita, a Japanese fashion designer, who contested a decision by the Japan Patent Office (JPO) to deny trademark registration for a compound mark consisting of “TAKAHIROMIYASHITA” and “TheSoloist.” under Article 4(1)(viii) of the Trademark Law.
[Judicial case no. Reiwa2(Gyo-ke)10006]

TAKAHIROMIYASHITATheSoloist.

Disputed mark (see below) was filed by Kabushiki Kaisha Soloist, founded by Takahiro Miyashita, on September 21, 2017, covering various fashion items in class 14, 18, and 25. [TM application no. 2017-126259]

In 2010, immediately after starting a company ‘Kabushiki Kaisha Soloist’, Takahiro Miyashita allegedly has launched his new brand “TAKAHIROMIYASHITATheSoloist.” and used the disputed mark on clothing, sandals, sunglass, eyewear, accessories designed by him since then and the disputed mark has become famous for his fashion brand. Consequently, relevant consumers and traders would not associate the disputed mark with any individual other than him.

Refusal decision by JPO

The Japan Patent Office (JPO) refused the mark in contravention of Article 4(1)(viii) of the Trademark Law, on the ground that the disputed mark contains a full name of private individual named “Takahiro Miyashita”. It is obvious that there are several Japanese people with the same name.

Article 4(1)(viii)

Article 4(1)(viii) of the Trademark Law prohibits registration of trademarks which contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof for the purpose of protecting personal rights of a living individual. Notwithstanding the provision, the article is not applicable where the applicant of the disputed mark produces the written consent of the person.

The Supreme Court of Japan has ruled the article shall be interpreted to protect the personal rights of a living individual. In line with the Supreme Court ruling, Trademark Examination Manuals (TEM) set forth that the article is applicable not only to natural persons (including foreigners) and corporations but also associations without capacity.

On January 29, 2019, the Appeal Board of JPO decided to affirm the examiner’s refusal on the same ground. [Appeal case no. 2019-1138]

To contest the administrative decision, the applicant filed an appeal to the IP High Court.

IP High Court Ruling

The court dismissed the allegation entirely, by stating that:

  1. Even though the disputed mark contains literal elements unrelated to the name of a living person, Article 4(1)(viii) is still applicable since relevant consumers would conceive the literal portions of “TAKAHIROMIYASHITA” as a name of a Japanese person.
  2. It is indisputable that there are several Japanese with the same name as Takahiro Miyashita and some of their names are written in different Chinese characters.
  3. The applicant failed to prove that he obtained consent from them.
  4. Alleged facts that the founder of the applicant has become famous as a fashion designer and because of it, relevant consumers and traders are unlikely to connect the disputed mark with any individual other than the designer would be construed irrelevant in applying Article 4(1)(viii).

Based on the foregoing, the IP High Court sided with the JPO and upheld the refusal decision.

Click here to see the Court’s official ruling (Japanese only)