【Trademark Act★★】A case in which the Court found that a sound trademark containing the lyric “matsumotokiyoshi” does not corresponds to a trademark which contains the name of another person set forth in Article 4, Paragraph 1, Item 8 of the Trademark Act, and revoked a decision of the Japan Patent Office which refused an application for registration of the sound trademark because it corresponds to a trademark containing the name of another person.

The Intellectual Property High Court Decision of August 30, 2021 (Case No. 2020 [Gyo-Ke] 10126―Presiding Judge Ichiro OTAKA)

◆Main text of the case

【Summary of the Judgment】

1. Regarding the meaning of the “name of another person” set forth in Article 4, Paragraph 1, Item 8 of the Trademark Act

   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.

    
   

2. Application to this case

   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.

【Comment】

1. Recently, in examination practices and court cases (“KENKIKUCHI” Case―Intellectual Property High Court Decision of August 7, 2019 [Case No. 2019 (Gyo-ke) 1037], “TAKAHIROMIYASHITATheSoloist.” Case―Intellectual Property High Court Decision of July 29, 2020 [Case No. 2020 (Gyo-ke) 10006], etc.), applications for registration of one’s own personal name as a trademark, especially applications from the fashion-related field wherein designers’ personal names are often used as their own brand names, are often refused even though constitution of such a trademark is devised (Masako Nishimura “Consideration for IP management in the field of fashion”, Patent Vol. 67, No. 15, p. 55) on the grounds that a trademark consisting of a personal name corresponds to the trademark containing the name of another person set forth in Article 4, Paragraph 1, Item 8 of the Trademark Act, under which the name of another person is not required to be famous or well known. Critical considerations thereon were made (Maiko Fuchi “Case for Registration of Trademark Including Name of Other Person Denied”, Tokkyo Kenkyu No. 71, p. 66, Ryutaro Nakagawa “Reexamination of Using ‘Other’s Name’ in Trademarks: An Appropriate Balance between Protection of Name Rights and Freedom of Choice of Brand Name”, IP Journal No.16, p. 21, etc.) for attaching too much emphasis to protection of moral interests of “another person” in connection with the “name” (“LEONARD KAMHOUT” Case―Supreme Court Decision of June 8, 2004, and “国際自由学園 (kokusaijiyugakuen)” Case―Supreme Court Decision of July 22, 2005).
    
   Under the above-mentioned circumstances, regarding the summary of Judgment 1, the Court found, based on the prevailing opinion that whether a trademark corresponds to a trademark containing the “name of another person” set forth in Article 4, Paragraph 1, Item 8 of the Trademark Act should be determined not only by the trademark’s physical constitution itself, but also by recognition of persons who come in contact with the trademark (Shigekiho Kanai and others “Trademark Law Commentary”, p. 103 [Shigeki Chaen]), especially for a sound trademark, that even if a person actually exists who has a name which generates the pronunciation identical with sound constituting a sound trademark, in the case where persons who came in contact with the sound trademark do not usually associate and recall a person’s name from the sound constituting the sound trademark, the sound cannot be considered to be generally recognized as indicating a person’s name, and therefore, the sound trademark is not considered to correspond to the trademark containing the name of another person set forth in Article 4, Paragraph 1, Item 8 of the Trademark Act. It is considered that, setting aside direct applicable scope of the summary of Judgment 1, the purport thereof may be applied to trademarks other than sound trademarks.

    

2. Regarding the summary of Judgment 2, the Court found, based on the summary of Judgment 1 and applied the same to this case, that under actual transaction circumstances, at the time of filling the application for registration of the Applied Trademark which is a sound trademark, persons who came in contact with the Applied Trademark would usually associate and recall the word “マツモトキヨシ” as a drugstore name, Matsumoto Kiyoshi Co., Ltd., a company name etc., from the sound constituting the Applied Trademark, and said persons would not normally associate and recall the person’s name, and therefore, the Applied Trademark is not considered to correspond to a trademark containing the “name of another person” set forth in Article 4, Paragraph 1, Item 8 of the Trademark Act. Although it may be difficult to typologically and drastically settle above-mentioned problematic situation, the summary of Judgment 2 still has considerable significance as a judgment on this individual specific case.

【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

※ The contents of this article are intended to convey general information only and not to provide any legal advice.

Kei IIDA (Writer)

Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)

Contact information for inquiries:   k_iida@nakapat.gr.jp