https://www.tmi.gr.jp/uploads/2023/07/24/jptu_issue24.pdf#page=3

 

Introduction

A new bill is paving the way for designers to register their names as brand names with trademark protections in Japan. On June 7, 2023, the National Diet of Japan enacted　the Bill for Partial Revision of the Unfair Competition Prevention Act, etc. (“Bill”). The Bill includes an amendment to Article 4(1)(viii) of the Japanese Trademark Act (“Article 4(1)(viii)”) that would allow a trademark containing the name of a natural person to be registered without the consent of others who have the same name if certain requirements are met, so that a person who conducts business activities under his or her own name can properly protect that name as a trademark.

 

Issue of the Current System

The purpose of Article 4(1)(viii) is to protect the personal interests of others with respect to their names, etc. (Supreme Court, No. 2003 (Gyo-hi) 265) and to protect the interests of others against the use of their names, etc. used as trademarks without their consent (Supreme Court, No. 2004 (Gyo-hi) 343). In recent cases, the registrability of a trademark that includes the name of another person in its composition is strictly determined by the Intellectual Property High Court (“IPHC”), without considering whether the name of another person or the applicant is well known or not (see our article titled “Protection of a Brand Name Consisting of the Designer's Name” in Issue 19 of our Japan Patent & Trademark Update). Following such decisions by the Court, examination and trial practice at the Japan Patent Office (“JPO”) also strictly applies Article 4(1)(viii) to trademarks that include the name of another person. However, there have been strong efforts to relax the requirements of this provision, particularly in the fashion industry where designer names are often used as brand names. In addition, since other regions such as the United States, Europe, China and Korea have established a system in which the reputation of another person is required for the registration of a trademark containing the name of another person, it has been desired to revise this provision from the perspective of international harmonization of trademark systems.

 

Draft Amendment to Article 4(1)(viii)

The draft amendment to Article 4(1)(viii) includes a limitation on the “name of another person” in terms of well-known status. The comparative table below shows the current language and the proposed amended Article 4(1)(viii) (English translation of the draft amendment is by the author.).

 

Conclusion

There is no doubt that this revision of Article 4(1)(viii) has long been desired by many fashion designers operating in Japan and should be welcomed with a big round of applause. There remain many details to be decided, such as the degree of well-known status required for the “name of another person” in Article 4(1)(viii) to achieve a balance between the applicant's interest and the personal interest in the name of another person, and whether to require reasonable grounds for the applicant of a trademark containing the “name of another person” in order to prevent a third party from obtaining the trademark. These will be discussed in the Trademark Examination Standards Working Group from July 2023.