Japan Update: Recent IP High Court Decision on a sound trademark for a famous drug store chain “Kiyoshi Matsumoto”

１. Introduction

On August 30, 2021, the Intellectual Property High Court (hereinafter, the “IP High Court”) revoked the trial decision of the Japan Patent Office that rejected the trademark registration application for the sound trademark containing lyrics of “Matsumotokiyoshi” (hereinafter, the “Sound Trademark”), which Matsumotokiyoshi Holdings Co., Ltd. (hereinafter, the “Plaintiff”) filed in January 2017.

Article 4, Paragraph 1, Item 8 of the Trademark Act (hereinafter, the “Item”) provides that no trademark containing “the name of another person” may be registered except where approved by the person concerned. The purpose of this provision was to protect moral interests in the name of a person; however, recently, this provision is strictly applied, and the cases where registration is not allowed are more frequent. In fact, although the Plaintiff was once allowed to register the trademark “Matsumotokiyoshi” in katakana (Trademark Registration No. 4330343 (Trademark Application Hei 10-016853), Trademark Registration No. 5282881 (Trademark Application 2007-065598), the Japan Patent Office did not allow the registration of the Sound Trademark.

Having said that, it is quite common in fashion industry to use the name of a person as a brand name, and the brands such as Paul Smith or Yohji Yamamoto derive from the names of designers. Registration of such trademarks written in the Roman alphabet or trademarks written in katakana is rejected as long as there is any person whose name reads in the same way as these trademarks, and in this case, the identity of writing in Chinese characters is not questioned, and the scope of “the name of another person” is wider. It is not necessarily easy to obtain the consent of all other persons all over Japan whose names read in the same way, and the interpretation of this provision was arguable until now.

The present ruling determines that the sound of “Matsumotokiyoshi” “cannot be said to be generally recognized as indicating the name of a person” in light of actual circumstances of transactions, and thus, the Sound Trademark is not “the name of another person.” This is a ruling in the spotlight that shows a new way of interpretation of the Item, and the following is a summary of its contents and significance.

２. Sound Trademark and the judgment of the Japan Patent Office

The Sound Trademark, for which the Plaintiff filed an application, is the following sound trademark (Trademark Application 2017-7811) consisting of musical elements and a linguistic element of “Matsumotokiyoshi.” In March 2018, the Japan Patent Office issued a decision of refusal against the Sound Trademark because it fell under Article 4, Paragraph 1, Item 8 of the Trademark Act, and in June 2018, the Plaintiff claimed a trial against the decision of refusal (Objection 2018-8451).

In the trial against the decision of refusal, the Japan Patent Office dismissed the Plaintiff’s claim because (i) considering that many people whose family names read “Matsumoto” and whose personal names read “Kiyoshi” appeared on websites or “Hello Page” of NTT East Corporation and NTT West Corporation, the linguistic element of “Matsumotokiyoshi,” which constitutes the Sound Trademark, is objectively recognized as the name of a person that reads “Matsumotokiyoshi,” and thus, the Sound Trademark is a trademark containing the “name” of a person, and (ii) the people whose names read “Matsumotokiyoshi” as shown on the above- mentioned websites and “Hello Page” is found to be other persons than the Plaintiff, but the Plaintiff is not found to obtain the consent of such other persons, and (iii) therefore, the Sound Trademark is a trademark containing “the name of another person,” and it is not found that the consent of such another person is obtained, and thus, Article 4, Paragraph 1, Item 8 of the Trademark Act applies and the Sound Trademark may not be registered, and (iv) even if the Sound Trademark has certain notability as indicating the abbreviation for the trade name of the Plaintiff or its subsidiary and the store name of drugstores, supermarkets and DIY stores managed by the subsidiary, the determination as to whether the Sound Trademark falls under the Item does not depend on such a fact.

３. Judgment of the IP High Court

The IP High Court first stated that in light of the purpose of the Item, if the sound that constitutes a sound trademark is generally recognized as indicating the name of a person, it is construed that the sound trademark is a trademark containing “the name of another person,” and may not be registered without consent of such another person. In addition, the IP High Court held that the Item is a provision intended to adjust the benefit of the applicant from obtaining a trademark registration and the moral interests in the name of another person, and even if there is any person whose name is the same as the sound constituting a sound trademark, the Item cannot be construed as a provision that always gives priority to the moral interests in the name of another person even if the sound is not generally recognized as indicating the name of a person.

On that basis, the IP High Court presented the standards for determining that, even if there is a person whose name reads in the same way as the sound that constitutes a sound trademark, the sound trademark should not be regarded as a trademark containing “ the name of another person” as set forth the Item because, in light of the actual circumstances of transactions, if a person who contacts the sound trademark is not found, at the time of filing of an application for trademark registration, to usually associate and recall the name of a person from the sound that constitutes the sound trademark, the sound cannot be said to be generally recognized as indicating the name of a person, and thus, it should be said that the sound trademark could not be recognized as a trademark containing “the name of another person” as in the Item.

As the actual circumstances of transactions relating to the Sound Trademark, the IP High Court held that (i) the indication of “Matsumotokiyoshi” was famous nationwide for indicating the store name of drugstores “Matsumotokiyoshi” and Matsumotokiyoshi Co., Ltd., the Plaintiff and the Plaintiff’s group companies at the time of filing of the Sound Trademark, and (ii) the sound that is identical or similar to the Sound Trademark, which contains the linguistic element of “Matsumotokiyoshi,” was widely known as an advertisement (a commercial song phrase) for drugstore “Matsumotokiyoshi” as a result of being used in TV commercials and each retail store of drugstore “Matsumotokiyoshi.”

Then, under such actual circumstances of transactions, what a person who came into contact with the Sound Trademark at the time of filing of the application for the Sound Trademark generally easily associated and recalled from the sound consisting of the linguistic element of “Matsumotokiyoshi” in the structure of the Sound Trademark was “Matsumotokiyoshi” as a drugstore name, or Matsumotokiyoshi Co., Ltd., the Plaintiff or the Plaintiff’s group companies as corporate names, not the name of a person that reads “Matsumoto Kiyoshi” and thus, the sound could not be said to be generally recognized as indicating the name of a person, and the IP High Court revoked the trial decision of the Japan Patent Office.

４. Significance of the present ruling

In the present ruling, the Japan Patent Office’s claim that the sound consisting of the linguistic element of “Matsumotokiyoshi ” in the structure of the Sound Trademark falls under “the name of another person” because it cannot be denied that the sound is objectively grasped as the name of a person such as “Matsumoto Kiyoshi” was rejected on the grounds that Article 4, Paragraph 1, Item 8 of the Trademark Act cannot be construed as providing that the moral interests in the name of another person shall always take precedence even if the sound is not generally recognized as indicating the name of a person. This is an interpretation that, when determining the applicability of Article 4, Paragraph1, Item 8 of the Trademark Act, it is necessary to balance the applicant’s interest with the moral interest in the name of the person, taking into consideration “whether the sound is generally recognized as indicating the name of the person,” that is, the actual circumstances of transactions concerning the applied trademark.

Meanwhile, on August 7, 2019, the IP High Court, in an action to revoke a trial decision on a trademark bearing the logo that includes the letters of “KENKIKUCHI,” held that the lettering of the trademark fell under the category of “the name of another person,” and concluded that “even if the trademark has a certain level of publicity as the logo of the brand ‘Kenkikuchi,’ such fact does not affect the above finding.” As a result of the present ruling, the traditional judgment of the IP High Court may be changed and in the future, even a trademark that formally includes a name may be allowed to be registered if it is well known as a famous brand.

However, the present ruling relates to sound trademarks for which trademark registration was newly permitted by the amendment of the Trademark Act in 2014. As of October 2021, more than 300 sound trademarks have been registered, and the number of registrations is expected to increase in the future. A sound trademark consists of (i) a combination of musical elements (such as rhythm, melody, harmony and timbre) and linguistic elements, or (ii) only musical elements. According to the current examination standards of the Japan Patent Office, the latter is not found to be distinctive in principle, and musical elements are found to be distinctive only when it is proven that distinctiveness by use has been acquired. In the present case, in recognition of the fact that the Sound Trademark not only contained musical elements but also had a track record of being used in TV commercials and in the retail stores of the applicant, the melody (musical element) played at the same time as the word “Matsumotokiyoshi” is considered to have played an important role in determining the applicability of the trademark containing “the name of another person” in Article 4, Paragraph 1, Item 8 of the Trademark Act to the Sound Trademark.

In light of the above circumstances in the preset case, it is necessary to pay attention to future developments as to the extent to which judgment similar to that in the present ruling is applied.

By Anderson Mori Tomotsune, Japan, a Transatlantic Law International Affiliated Firm. 

For further information or for any assistance please contact japan@transatlanticlaw.com

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