Even if a person who has a name which generates a pronunciation identical with a sound constituting a sound trademark actually exists, in the case where it cannot be acknowledged in light of the actual transaction circumstances that, at the time of filing an application for registration of the sound trademark, persons who came in contact with the sound trademark would usually associate and recall a person’s name from the sound constituting the sound trademark, it cannot be considered that the sound is generally recognized as indicating a person’s name. Therefore, the sound trademark cannot be considered to correspond to a trademark which contains the name of another person set forth in Article 4, Paragraph 1, Item 8 of the Trademark Act.
As specified below, the trademark in question (the “Applied Trademark”) is a sound trademark which consists of a sound element presented in the form of a staff and a linguistic element described in katakana characters as “マツモトキヨシ”, that is, a lyric pronounced as “matsumotokiyoshi”.
【Cited from Exhibit attached to Written Judgment】
It is acknowledged that, at the time of filing an application for registration of the Applied Trademark (January 30, 2017), the indication “マツモトキヨシ” had been nationally well-known as a store name, or as that indicating Matsumoto Kiyoshi Co., Ltd., the plaintiff or group companies of the plaintiff, and the sound identical or similar to that generated from the Applied Trademark containing the linguistic element “マツモトキヨシ” had been widely known as an advertisement (a phrase in a commercial song) of the drugstore “マツモトキヨシ” as a result of using the same for TV commercials and in the retail stores of the drugstore chain “マツモトキヨシ”.
Under such actual transaction circumstances, it is considered that, at the time of filling the application for registration of the Applied Trademark, persons who came in contact with the Applied Trademark would usually and easily associate and recall the word “マツモトキヨシ” as the drugstore name, Matsumoto Kiyoshi Co., Ltd., a company name, the plaintiff or the plaintiff’s group companies from the sound consisting of the linguistic element “マツモトキヨシ” in the component of the Applied Trademark, and said persons would not normally associate and recall the person’s name of “Matsumoto Kiyoshi”, which can be written as “松本清”, “松本潔”, “松本清司”, etc. in kanji characters. Therefore, it cannot be said that the sound in question can be generally recognized as that indicating the person’s name.
Accordingly, it cannot be acknowledged that the Applied Trademark corresponds to the trademark containing the “name of another person” set forth in Article 4, Paragraph 1, Item 8 of the Trademark Act.
【Keywords】A sound trademark, マツモトキヨシ (matsumotokiyoshi), Article 4, Paragraph 1, Item 8 of the Trademark Act, the name of another person
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Kei IIDA (Writer)
Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)
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