Relaxed Registration Requirements concerning Third Person’s Name Trademarks
Background
Prior to the revision of April 1, 2024, it was stipulated that a trademark containing another person’s name could not be registered without the consent of that other person (Article 4(1)(viii) of the Trademark Law), and a trademark containing "another person’s name" could not be registered without the consent of all other persons having the exact same name, regardless of the popularity of the applied trademark and of the person’s name.
As applications had to be uniformly rejected in case of identical or homophonic names even if the applied trademark contained the well-known name of the applicant or that of a company closely related thereto, there have been calls, mainly from the fashion industry where the names of founders, designers, etc. are frequently used as brand names, to relax the requirements of Article 4(1)(viii).
Overview of this Revision
Article 4(1)(viii) of the Trademark Law has been amended to relax the registration requirements by imposing a certain degree of name recognition of the “another person’s name” (Degree of Recognition requirement) and a requirement to consider the applicant’s circumstances (Governmental Ordinance requirement).
Specifically, an application will be granted if the following requirements are satisfied:
1. The “another person’s name” is not well-known among consumers
If the “another person’s name” is well-known, in line with the previous stipulation, the consent of the other person must be obtained.
2. The “Governmental Ordinance requirement”
There are two requirements to satisfy the “Governmental Ordinance requirement”
(1) the existence of a reasonable relationship between the “another person’s name” and the applicant;
(2) the applicant does not file the application in bad faith.
If either of the above requirements is not satisfied, the application will be rejected. The consent of the other person must be obtained, in line with the previous stipulation.
The amended law only applies to applications and international registrations filed on or after April 1, 2024. Applications filed by March 31, 2024, do not benefit from this revision.
*1) Even if there are no grounds for refusal under Article 4(1)(viii) of the Trademark Law, other grounds for refusal may exist.
*2) When the Governmental Ordinance requirement is not satisfied either, the grounds for refusal are “Degree of Recognition requirement” and the “Governmental Ordinance requirement”.
Jumpei SARUYAMA,
Patent Attorney (Trademarks, Designs)