August 24, 2022

Trademark News

The Intellectual Property High Court (the "IP High Court") held that a sound trademark containing lyrics of "Matsumoto Kiyoshi" does not constitute a trademark containing "another person's name" under Article 4 (1) (viii) of the Trademark Act.

Concerning the Plaintiff's application for a sound trademark containing lyrics "Matsumoto Kiyoshi", the IP High Court determined that the trademark cannot be considered to be a trademark containing "another person's name" under Article 4 (1) (viii) of the Trademark Act because the sound is not generally recognized as referring to a person's name. (IP High Court Judgement, August 30, 2021 (Case number: 2020 (Gyo-Ke) 10126).

Background
Matsumoto Kiyoshi Holdings Co., Ltd. (the "Plaintiff") filed an application for the following sound trademark (the "Trademark") with the JPO, which was rejected by the JPO on the grounds that the Trademark contained a name of another person and thus fell under Article 4 (1) (viii) of the Trademark Act.
“Matsumoto” is a common surname in Japan and “Kiyoshi” is also a common first name. Therefore, there could be many who has the name “Matsumoto Kiyoshi”.
In response to the rejection, the Plaintiff filed a request for a trial and received a trial decision of refusal (the "Trial Decision"). Therefore, the Plaintiff filed a lawsuit with the IP High Court to appeal and cancel the Trial Decision.

The Trademark (JP2017-007811)


Article 4 (1) (viii) of the Trademark Act stipulates as follows;
(1)　Notwithstanding the preceding Article, no trademark may be registered if the trademark:
(viii)　contains the portrait of another person, or 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);

Judgment
1 Framework for judgment
It is understood that the purpose of Article 4 (1) (viii) of the Trademark Act is to protect the interest of a person that the person’s name should not be used in a trademark without his or her consent.
In light of the purpose of the item, if a sound constituting a sound trademark is generally recognized as referring to a person's name, the sound trademark cannot be registered because it is a trademark containing "another person's name", unless the applicant has obtained the consent of the person.
In addition, the item intends to reconcile the interests of an applicant seeking a trademark registration with the moral interests of another person's name. Therefore, it is thought that this item does not stipulate that the moral interests in the name of another person always take precedence even if there is a person whose name has the same appellation as the sound that constitutes the sound trademark and the sound is not generally recognized as referring to the name of a person.
Then, even if there is a person whose name has the same appellation as a sound that constitutes a sound trademark, in light of the trade practices, if people who come into contact with the sound trademark at the timing of trademark application are not normally considered to associate the sound that constitutes the sound trademark with a person’s name, the sound is not generally recognized as indicating the person's name. Therefore, the sound trademark should not be considered to be a trademark containing "the name of another person" under the item.

2 Determination of facts about the trade practices
(1) After Matsumoto Kiyoshi Holdings Co., Ltd. started to open "Matsumoto Kiyoshi" drugstores in 1987, for more than 30 years until the filing of the Trademark on January 30, 2017, Matsumoto Kiyoshi Holdings Co. Ltd., the Plaintiff, and their group companies continuously used the indication "Matsumoto Kiyoshi" as the name of their drugstores or their corporate names. (2) As of March 31 of 2017, the number of "Matsumoto Kiyoshi" drugstores reached 1,555 in 45 prefectures nationwide, and the number of members of the Plaintiff's group companies' membership cards reached approximately 24.4 million, and the "Matsumoto Kiyoshi" brand was rated as the number one brand in Japan as a drugstore in the brand value evaluation rankings for 2016 and 2017. (3) In the TV commercials for the drugstore "Matsumoto Kiyoshi" which started in 1996, a considerable number of commercial songs containing phrases with the same or similar sound as the Trademark were used. Even after the broadcasts of the TV commercials have ended, the Trademark was used in the "Matsumoto Kiyoshi" drugstores.

According to these facts, with regard to the trade practices regarding the Trademark at the timing of filing the Trademark, the indication "Matsumoto Kiyoshi" was well-known nationwide as the name of the drugstore "Matsumoto Kiyoshi" and as an indication of Matsumoto Kiyoshi Holdings Co., Ltd. It is also found that the sound identical or similar to the Trademark containing the linguistic element "Matsumoto Kiyoshi" was widely known as an advertisement of the drugstore "Matsumoto Kiyoshi" as a result of its use in TV commercials and the drugstore "Matsumoto Kiyoshi".

3 Conclusion
In view of the trade practices described above, at the time of filing the Trademark, people who came into contact with the Trademark would normally and easily associate the sound consisting of the linguistic element "Matsumoto Kiyoshi" in the composition of the Trademark with the drugstore’s name "Matsumoto Kiyoshi". On the other hand, because the sound is not considered to be associated with the name of a person which is usually read as "Matsumoto Kiyoshi", it cannot be said that the sound is generally recognized as indicating the name of a person.
Therefore, the Trademark cannot be considered to be a trademark that includes "another person's name" under Article 4 (1) (viii) of the Trademark Act.


Comments

This is the first case in which it was determined whether a sound trademark consisting of linguistic elements falls under Article 4 (1) (viii) of the Trademark Act (trademark containing the name of another person). A Supreme Court judgment and scholars’ common view have interpreted the purpose of Article 4 (1) (viii) of the Trademark Act to be to protect the moral interest of a person that his or her name should not be used as a trademark without his or her consent (the Supreme Court judgment on June 8, 2004). In the context of the purpose of the provision, trademark registrations of characters and logos tend to be refused if the name of another person is formally included in the trademark, and there have been many criticisms of this practice.
This Judgment is very innovative because it stated that the applicant's interest in obtaining trademark registration is an element to consider.
This Judgment showed that, in light of the trade practices, if people who come into contact with the sound trademark at the time of the application for trademark registration are not normally considered to associate the sound that constitutes the sound trademark with a person’s name, the sound is not generally recognized as indicating the name of a person, and therefore the sound trademark cannot be considered to be a trademark containing the name of another person.
This Judgment is only about sound trademarks, and it is not clear whether it extends to other types of trademarks as well. In other words, it should be noted that this Judgment examines the issue of whether "a person's name" can be associated with a sound of "Matsumoto Kiyoshi".
However, as long as Article 4 (1) (viii) of Trademark Act is viewed as a provision "for the purpose of reconciling the applicant's interests in obtaining a trademark registration with the moral interests in another person's name", it seems that the scope of this Judgment is not necessarily limited only to sound trademarks.
For example, in the case of a trademark that is a logo or a graphic which consists of a name of a person, it would be possible that a particular company will be associated with the logo, etc. and the name of the person will not be associated. On the other hand, in the case of a trademark consisting of a person's name in standard characters, it seems difficult to say that the trademark does not refer to a "person's name" by viewing the trademark alone. In this regard, this Judgment considers the well-known status of "Matsumoto Kiyoshi" as a corporate name and brand and the well-known status of "Matsumoto Kiyoshi" as a sound from the viewpoint of trade practices. This Judgement would be a useful reference in determining whether a certain trademark can be considered to contain a "person's name”.
This Judgment would have a significant impact on the strict practice of Article 4 (1) (viii) of the Trademark Act, which has been widely criticized in the past, and future developments are awaited.

Written by: Mr. Kota Yamada (Attorney at law)