September 29,2020
The Intellectual Property High Court Decision of July 29, 2020 (Case No. 2020 [Gyo-Ke] 10006―Presiding Judge MORI)
◆Main text of the case
【Summary of the Judgment】
- The mark “TAKAHIROMIYASHITATheSoloist.” (common characters) is easily recognized as a composite trademark composed of the portions of “TAKAHIROMIYASHITA” and “TheSoloist.”, and the portion of “TAKAHIROMIYASHITA” is objectively recognized as a person’s name which read as “ミヤシタ[miyashita] (family name) タカヒロ[takahiro] (first name)”. Therefore, the mark in question is considered to be a trademark which contains the name of a person.
- Persons having the above-mentioned name actually exist, and such persons and the plaintiff are different from each other, and the registration of the mark in question has not been approved by such persons. Accordingly, the mark in question corresponds to a “trademark which contains…the name…of another person…(except those the registration of which has been approved by the person concerned)” set forth in Article 4, Paragraph 1, Item 8 of the Trademark Act (hereinafter simply referred to as “Item 8”). In light of the purport of Item 8 which is to protect the moral interests concerning the name of a person, and the wording of Item 8 which does not limit the “name” to a “well-known” one unlike a “pseudonym”, “professional name”, “pen name”, and “abbreviation” thereof, it is understood that the “name of another person” under Item 8 does not require fame or rarity.
【Comment】
- Article 4, Paragraph 1, Item 8 of the Trademark Act defines unregistrable trademarks as those that “contain…the name, well-known pseudonym, professional name, or pen name of another person, or well-known abbreviation thereof (except those the registration of which has been approved by the person concerned)”. Regarding the summary of Judgment 1, the Court recognized the mark in question as a composite trademark and the first half portion of the mark in question as a person’s name, and on that basis, the Court found that the mark in question is considered to be a trademark which contains the name of a person.
- Regarding the summary of Judgment 2, the Court found that persons having the above-mentioned name actually exist, such persons and the plaintiff are different from each other, and the registration of the mark in question has not been approved by such persons, and accordingly, the mark in question corresponds to a “trademark which contains…the name…of another person…(except those the registration of which has been approved by the person concerned)” set forth in Article 4, Paragraph 1, Item 8 of the Trademark Act. Further, in light of the purport and wording of Item 8, the Court interpreted that the “name of another person” under Item 8 is not required to be famous, well-known, or rare. Although there is an opposing view (Makoto Amino “Trademark [the 6th edition]” (2002, Yuhikaku) p.338), such interpretation is consistent with previous court decisions (the IP High Court Decision of September 17, 2008 <Case No. 2008 [Gyo-ke] 10142>, court website (the Reiyu-kai Case) etc.).
【Keywords】A composite trademark, Article 4, Paragraph 1, Item 8 of the Trademark Act, the name of other person, fame, rarity, moral interests
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Kei IIDA (Writer)
Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)
Contact information for inquiries: k_iida@nakapat.gr.jp