APAA e-Newsletter (Issue No. 26, December 2021)

Sound Mark Comprising Person’s Name – IP High Court Judgment

Tsutomu Takehara, Ai Association of Patent and Trademark Attorneys (Japan)

1. Issue

Whether a sound mark comprising a linguistic element that may be understood as a person’s name is registrable.

2. Subject Application and file history

Mark: musical notes and a linguistic element “Matsumoto Kiyoshi” in Japanese Kana letters (Application No. 2017-007811)
【FIG.1】

Services: Class 35- retail or wholesale services for clothing, footwear, bags, foods, beverages, furniture, electrical machinery and apparatus, et al (a wide variety of goods)

The subject application was ultimately refused registration by the JPO Appeal Board, on the ground that the mark contained the name of another person “Matsumoto Kiyoshi” and no consent to the registration of the mark was obtained from the person, which breaches Article 4 (1) (viii) of the Trademark Act.

The applicant (Plaintiff) filed a lawsuit with the IP High Court, to request a cancellation of the Appeal Board decision.

3. Summary of the Judgment

The IP High Court cancelled the JPO Appeal Board decision and substantially granted the subject application, holding that the linguistic element “Matsumoto Kiyoshi” in Japanese Kana letters in the mark was not associated with a person’s name at the time of filing of the application because the linguistic element had already been famous among the Japanese public, as the name of the drug store Juggernaut (Case Number R2 (Gyo-Ke) 10126, Appeal Lawsuit against Decision by Appeal Board of Japan Patent Office, Judgement issued by Intellectual Property High Court on August 30, 2021).

4. Outline of the Case

The IP High Court quoted the following Supreme Court precedents:

“Article 4 (1) (viii) of the Trademark Act protects a person’s personal rights-like interest in not having her or his name, etc. used in a trademark without her or his consent.” (Leonard Kamhout Case – Supreme Court Decision H15 (Gyo-Hi) 265 of June 8, 2004/ Kokusai Jiyu Gakuen Case – Supreme Court Decision H16 (Gyo-Hi) 343 of July 22, 2005)

The court held that, in light of the spirit of Article 4 (1) (viii) described above, where the sound created by a sound mark is recognized as referring to a person’s name, the said sound mark cannot be registered unless an applicant obtains consents from the person with such a name. However, it also pointed out that the purpose of this provision was to reconcile an applicant’s interest in obtaining a trademark registration with another person’s personal rights-like interest in her/his name, and that in a case where the sound is not generally recognized as indicating a person’s name, it cannot be interpreted that the provision always gives priority to the personal rights-like interest in another person’s name. If those who come across the sound mark do not normally associate it with or recall from it a name of a person at the time of filing of the trademark application, then, the sound is not generally recognized as referring to a person’s name, taking into account the actual conditions of trade. The court decided that, in such a case, the sound mark cannot be considered to be a trademark containing “the name of another person” as stipulated in the provision of the Trademark Act.

The court determined that under the actual circumstances of trade indicated below, those who come across the present trademark including the sound created by the linguistic element “Matsumoto Kiyoshi” in the mark would normally associate it with or recall from it the name of drug stores, their operating companies, or the enterprise group of the Plaintiff, and would not recognize it as a name of an individual.

1. The Plaintiff’s subsidiary operating the drug stores, Kabushiki Kaisha Matsumoto Kiyoshi, launched a drug store “Matsumoto Kiyoshi,” expanded across the country, and kept using the name as the name of the drug store and the company for more than 30 years.

2. The number of “Matsumoto Kiyoshi” drug stores totaled 1555, were all over the country, that is, the stores were in 45 of 47 prefectures in Japan, and the number of the customer members of its club card stood at around 24.4 billion, as of March 31, 2017.

3. The series of TV commercial messages of the drug store “Matsumoto Kiyoshi” started in 1996, using commercial songs including the sound element identical or similar to that of the present trademark. Even after the TV commercial messages ended in December 2007, the commercial songs were repeatedly played at and in its drug stores across the country.

4. Under the status quo, it is recognized that the drug store “Matsumoto Kiyoshi” was already famous in the whole of Japan and the sound element identical or similar to that of the present mark was well recognized as a phrase in the commercial songs in the promotions and advertisements of the drug store giant, “Matsumoto Kiyoshi.”

The court concluded that it cannot be said that the sound element is generally recognized as referring to “the name of another person” as stipulated in Article 4 (1) (viii) of the Trademark Act, and therefore the Appeal Board decision was not appropriate and should be cancelled.

5. Comment

There are pros and cons concerning this ruling by the IP High Court. Some assert that this decision is certainly a breakthrough in the interpretation of Article 4 (1) (viii) of the Trademark Act, while others say that this ruling deviates from the spirit of law.

The Trademark Act Article 4 (1) (viii) [Unregistrable Trademarks] provides that “(no trademark shall be registered) when the trademark 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)” and, as the Supreme Court precedents described above point out, the spirit is to protect a person’s personal rights-like interest in not having her or his name, etc. used in a registered mark without her/his consent.

Recently, trademarks incorporating individuals’ names are usually judged as being against Article 4 (1) (viii) of the Trademark Act to protect the personal rights-like interest of individuals, without regard to designated goods and services on which a mark is used. However, in the past, it was judged more leniently, that is, the JPO took into account of a certain degree of fame of the names in a product field having regard to designated goods and services in judging “the name of another person,” and it required consent only from the famous person in the particular field related to the designated goods and services, or from those who actively insisted on protection of their personal rights-like interest through opposition procedures. In this regard, the Plaintiff had obtained 35 trademark registrations of the marks including the word element of “Matsumoto Kiyoshi” in Japanese Kana letters or in Roman letters before this case, during the period between 1989 and 2013. The current strict practice and interpretation of Article 4 (1) (viii) had attracted criticism from the academic and practitioner circles, that it overemphasizes the protection for the personal rights-like interests of other people, compared to an applicant’s interest in obtaining a protection for her/his trademark. This time, the IP High Court seems to have rendered a judgement in view of such criticism and the balance between the personal rights-like interests and the protection to the mark. The court has decided that when a mark becomes a famous source identifier of a particular entity, then, it is no more “the name of an individual” and it is registrable.

However, on the other hand, it must be questioned whether the above-mentioned personal rights-like interest can be ignored just because a person’s name is the same as someone else’s famous trademark. There is an opposite view to the present ruling, that since Article 4 (1) (viii) does not literally allow such an exception, this ruling may deviate from the spirit of law.