Name of a deceased historical person as trademark

Trademark containing the name, famous pseudonym, professional name or pen name of another person in-life, or famous abbreviation thereof is prevented from registering based on Article 4(1)(viii) of the Japanese Trademark Law.

 Article 4(1)(viii) is applicable only to a person in-life, however.

What happens to the name of a deceased historical person?

 JPO admitted to register the following surname of historical person as trademark filed during the past half decade by an entity apparently unrelated to the person or his descendant.

Reg No. 5501361 for word mark “CLEOPATRA” in class 31

Reg No. 5610909 for word mark “NAPOLEON” in class 14

Reg No. 5870913 for word mark “EDISON” in class 21

Reg No. 5744685 for word mark “MOZART” in class 11

Reg No. 5514116 for word mark “NEWTON” in class 9, 41

Reg No. 5744686 for word mark “PICASSO” in class 11

Reg No. 5537255 for word mark “KENNEDY” in class 25


Meanwhile, “ANNE FRANK”, “JOHN LENNON”, “JAMES DEAN”, “MARILYN MONROE”, “CHAPLIN”, and “MOTHER TERESA” has been registered as a trademark owned by specific organization


Trademark Examination Manual (TEM) 42.107.04 revised in 2009 refers to approach to application filed for registering a trademark created after the name of a historical person or name of a well-known or famous deceased person.

 1. In the process of examining an application filed for registering a trademark, examiners should pay special attention to the application for a trademark created after the name of a historical person since using or registering such application may cause damage to social and public interest, irrespective the unobjectionable composition of the trademark, or generally-accepted sense of morality, which may fall under Article 4(1)(vii) of the Trademark Act. Specifically, they should analyze such application if it would fall under the provision, comprehensively taking the following backgrounds into consideration:

1) Popularity of the well-known or famous historical person;

2) Acceptance of the name of the historical person among the nation or region;

3) Availability of the name of the historical person;

4) Relationship between the availability of the name of the historical person and the designated goods or services;

5) Circumstance, purpose, or reason of the application; and

6) Relationship between the historical person and the applicant.

2. In the process of the examination said above, especially when examiners recognize the application as “an application for registering the trademark filed by the applicant who takes advantage of the measures for public interest using the name of a historical person, who hinders the execution of the measures, and who intends to monopolize the interest while he/she knows that the application would result in damaging public interest,” the application falls under Article 4(1)(vii) of the Trademark Act based on the idea that the application may disrupt the order of fair competition and cause damage to social and public interest.

 In a lawsuit disputing invalidity of mark “CARNEGIE SPECIAL”, the court ruled that the registered trademark as a whole was invalidated due to violation of public policy because it was presumed that the plaintiff had illegally intended to use the achievement of Dale Carnegie Note (1888 – 1955), famous writer, for his own business. (Decision by the Tokyo High Court, August 29, 2002 [2001 (Gyo Ke) No. 545])

To sum up, since 2009, it becomes evident that where an applied mark corresponds to the name of a historical person, the mark shall not be registered if its registration is likely to cause damage to public policy on the ground of violation of Article 4(1)(vii) and TEM 42.107.04. Inter alia, where a specific organization manages IP right of historical person, JPO will refuse registration of the name of such person accordingly.

Customarily used trademarks

Article 3(1)(ii) of the Japanese trademark law stipulates that

“a mark customarily used in connection with designated goods or services is not registrable”.

According to the trademark examination guideline (TEG), “customarily used trademarks” means trademarks which, having become customarily used with respect to the same type of goods or services among business operators relating to his business, are not distinctive to distinguish the goods or services of one party from those of other parties.

In a word, “customarily used trademark” results from a circumstance where a mark, coined and firstly used by registrant, became generic or descriptive, while it is inherently distinctive, as a result of free-hand use of the term on equivalent goods or services by competitors in general.

“Customarily used trademark” becomes controversy in an attempt to invalidate a trademark registration on the basis of Article 3(1)(ii), and to defend against claims of trademark infringement based on Article 26(1)(iv).


Article 26(1)(iv) stipulates that

“A trademark right shall have no effect on any of trademark customarily used for the designated goods or designated services or goods or services similar thereto”.


TEG enumerates examples of Customarily used trademark”.

(1) Trademarks consisting of characters, figures and other elements

“正宗” [MASAMUNE] (Refined Japanese sake wine)

“羽二重餅” [HABUTAEMOCHI] (Bean jam cake)

Figure of “オランダ船” [ORANDASEN] (cake)

“かきやま” [KAKIYAMA] (Rice crackers)

“観光ホテル” [KANKO HOTEL] (Provision of lodging accommodations)

“プレイガイド” [PLAY-GUIDE] (Arrangements for seats of entertainment facilities)


(2) Color marks

“Combination of red and white” (for wedding ceremonies)

“Combination of black and white” (for funeral ceremonies)


(3) Sound marks

“Cries of a street sellers who sells sweet potatoes baked on hot pebbles” (baked sweet potatoes)

“Sounds of a flute played by a street vendor who sells noodles on the streets at night (Chinese noodle supply)


In order to avoid successful defense, it is inevitable for registrants to take preventive action in a timely manner for the purpose of adequately protecting their trademark. Otherwise, trademark is likely to lose the strength and value of the mark.

How to avoid mispronounced marks

Unique writing system of the Japanese language consists of three different character sets: Kanji (several thousands of Chinese characters), and Hiragana and Katakana (two syllabaries of 46 characters each).

Specifically, Katakana gets used for writing foreign loanwords phonetically.

By virtue of Katakana, we get a clue to learn proper pronunciation of unpronounceable alphabetical words. In this regard, Katakana is obviously of great help to avoid phonetic slip-ups and mispronouncing high-profile brand names in Japan.

For instance,

When we come across a word “YVES SAINT LAURENT” for the first time, we most likely call it “i-bes-sein-to-lo-ren-to”.

Likewise, we may call “L’OCCITANE” as “lo-sshi-ta-ne”, “PEUGEOT” as “pe-u-ge-o-to”, “RENAULT” as “re-na-u-ru-to”, “agnès b” as “a-gu-ne-su-bi”, “MONC BLANC” as “mon-to-bu-ran-ku”, “T-fal” as “tei-fa-lu”.


In other words, less attention to Katakana in promoting alphabetical brand names is likely to result in mispronunciation among the relevant public in Japan as you can see from the examples.

What’s worse, it may give rise to tragedy that trademark registration for the alphabetical name is insufficient to force unauthorized entity to cease his use of a mark consisting of Katakana to represent correct pronunciation of the name due to dissimilarity of the marks.

Provided that trademark registration is solely composed of alphabetical words, pronunciation of the mark is construed based on the most natural, logical way to pronounce it.

In this regard, it was a bit surprise that the Supreme Court judged a word mark written in Katakana pronounced as “reeru-dyu-tan” is phonetically identical with a registered mark “L’Air du Temps” in Case 1998 (Gyo-Hi) 85. Undoubtedly the judgement was based on the facts that “L’Air du Temps” had become well-known as a brand of perfume and the registered mark had been advertised accompanying a Katanaka “reeru-dyu-tan” as well.

When we come across a word “L’Air du Temps” for the first time, little thought is given to call it “reeru-dyu-tan”. The most natural way to pronounce it is “lu-ear-dyu-ten-po-su” indeed.Thus, the Supreme Court judgement should not be considered to negate necessity of Katakana in avoiding mispronounced marks.


It is advisable to use and register a Katakana word representing correct pronunciation of brand name as well as the alphabetical letters, especially where the letters are unpronounceable to the Japanese and thus natural pronunciation is not what a brand owner expects the Japanese to call it.

How to decide similarity of composite marks

The Japanese Trademark Law sets forth:

– the use of a trademark similar to the registered trademark constitutes infringement of trademark right (Article 37(1)),

– trademark shall not be registered if the trademark is similar to another entity’s senior registered trademark (Article 4(1)(xi)).

It remains unclear from the articles how we can discriminate marks in dispute are similar or dissimilar.

Trademark examination guideline (TEG) plays a role to provide us with key factors in the assessment of similarity of marks.

[TEG Chapter 3, Part 10]

1.In judging the similarity of a trademark, decisive elements of the trademark, including its appearance, sound and concept need to be comprehensively taken into consideration.

2.A judgment on the similarity of a trademark needs to, with consideration given to a class of main users (for example, professionals, senior people, children, women, etc.) of goods or services on which the trademark is used, be made based on attentiveness usually possessed by the user, with consideration given to the state of transaction of the goods or the provision of the services.

The guidelines are set forth in conformity with precedent decisions of the Supreme Court.

In regard to composite marks, TEG enumerates seven cases and corresponding examples as follows.

 6.Concerning the similarity of a composite trademark composed of two or more elements, a judgment needs to be made based on the following among other things, with consideration given to the strength of a combination between its elements. However, this does not apply where such a trademark is judged clearly to produce a remarkably different appearance, sound and concept.

(1) A composite trademark having characters representing an adjective (characters indicating the quality, raw materials, etc. of goods or characters indicating the quality of services, the location of its provision, quality, etc.) is judged as similar to a trademark without the adjective as a general rule.





(2) A trademark composed of letters different in size is judged with respect to a group of letters identical in size as a general rule.


“富士白鳥” v. “富士” or “白鳥”

“サンムーン” v. “サン” or “ムーン”

(3) A trademark composed of letters conspicuously separate apart from each other is judged with respect to a group of letters separate from others as a general rule.


“鶴亀  万寿” v. “鶴亀” or “万寿”

(4) A trademark which, because of its long sound or its particularly conspicuous portion, may be simplified with a certain portion thereof is compared with other trademarks, in principle, with its portion picked up in its simplified form.


“cherryblossomboy” v. “cherryblossom”,

“chrysanthemumbluesky” v. “kurisanshimamu” or “blue-sky”

(5) A trademark combining letters customarily used for the designated goods or designated services with other letters is compared with other trademarks with the customarily-used letters removed.


“男山富士” v. “富士” for sake

“play guide shuttle” v. “shuttle” for arrangements for seats of entertainment facilities

 (6) A trademark combining another person’s registered trademark that is widely recognized in respect of the designated goods or designated services with other letters or figures, including one whose appearance in totality is well formed or one having a connection in concept, is judged as similar to that another person’s trademark, in principle, excluding however cases where the part of another person’s trademark has become an established word.


“SONY” v. “SONYLINE” in respect of tape recorders

“L‘OREAL” v. “LOVE L‘OREAL” in respect of cosmetics

(7) A trademark composed of a trade name (including a trademark composed of an abbreviation of a trade name, as hereinafter applicable) having such characters as “Co.,” “K.K.” “Ltd.,” etc. customarily used as part of a trade name is judged with those characters removed as a general rule, irrespective of their position respective to the primary part of the trademark, either at its head or end.


In the meantime, the Supreme Court decision rendered in 2008 established general rule to grasp composite marks in its entirety in the assessment of similarity of mark.

 “Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to decide similarity of mark as a whole simply by picking out an element of the composite mark and then comparing such element with other mark, unless consumers or traders are likely to perceive the element as a dominant portion appealing its source of origin of goods/service, or remaining elements truly lack inherent ability to serve as a source indicator in view of sound and concept.”


Based on the above rule, composite mark “TSUTSUMINO-OHINAKKOYA” was deemed dissimilar to a word mark “TSUSTUMI” on the grounds that latter portion of “OHINAKKOYA” is admittedly distinctive.

 Recent disputes arising from similarity of composite mark are entirely in conformity with the Supreme Court decision. Namely, a composite mark consisting of two or more distinctive elements will put you on the fast track to registration