In a recent decision, the Appeal Board of Japan Patent Office (JPO) refused to register trademark application no. 2015- 100245 for a red-colored word mark “ROMEO GIGLI” in gothic script (see below) designating goods of Class 24 and 25 on the grounds that applicant failed to obtain a consent from Italian fashion designer, Romeo Gigli, based on Article 4(1)(viii) of the Trademark Law.[Case no. 2017-3558]
Disputed mark was filed on October 16, 2015 in the name of ECCENTRIC SRL, an Italian legal entity, by designating following goods in Class 24 and 25.
“woven fabrics; elastic woven material; bed and table linen; towels of textile; bed blankets; table cloths of textile; bed covers; bed sheets; curtains of textile or plastic; table napkins of textile; quilts”
“clothing; T-shirts; shirts; jumpers; trousers; pants; jackets; skirts; jeans; neckties; overcoats; coats; belts; gloves; mufflers; sweat suits; underwear; swimsuits; headgear; hats; caps; footwear; special footwear for sports”
On December 9, 2016, JPO examiner refused the mark based on Article 4(1)(viii) of the Trademark Law.
Article 4(1)(viii) is a provision to prohibit registration of trademarks which contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof. Notwithstanding the provision, the article is not applicable where the applicant of disputed mark produces the written consent of the person.
The Supreme Court of Japan has ruled the article shall be interpreted to protect personal rights of a living individual. In line with the Supreme Court ruling, Trademark Examination Manuals (TEM) set forth that the article is applicable not only to natural persons (including foreigners) and corporations but also associations without capacity. Familiar name of foreigners falls under the category of “abbreviation” if its full name contains middle name(s) unknown to Japanese consumer.
Click here to access TEM on the JPO website.
Finding that disputed mark just consists of an individual name of famous fashion designer, Romeo Gigli, the examiner raised an objection based on Article 4(1)(viii) unless ECCENTRIC SRL obtains a consent from the designer.
The applicant filed a notice of appeal with the Appeal Board, a body within JPO responsible for hearing and deciding certain kinds of cases including appeals from decisions by JPO Examiners denying registration of marks, on March 9, 2017 and contended against the refusal decision by examiner.
During the appeal trial, ECCENTRIC SRL argued inadequacy of the decision by demonstrating following facts.
- ECCENTRIC SRL is a legitimate successor of trademark rights owned by Romeo Gigli as a consequence of mandatory handover resulting from bankruptcy of company managed by Romeo Gigli irrespective of his intention. Under the circumstance, it is almost impossible to obtain a written consent from him.
- In the meantime, ECCENTRIC SRL has already obtained trademark registrations for the word mark “ROMEO GIGLI” in several jurisdictions.
- Besides, ECCENTRIC SRL is a current registrant of Japanese TM registration no. 2061302 for identical wordmark in Class 4,18,21 and 26.
- There has been no single complaint from consumers, traders or Romeo Gigli in person.
ECCENTRIC SRL alleged that the above facts shall amount to having obtained an implicit consent from Romeo Gigli in fact. Thus, disputed mark shall be allowed for registration even without a written consent in the context of purpose of the article.
The Appeal Board dismissed the appeal, however, and sustained the examiner’s decision by saying that trademark registrations in foreign countries shall not be a decisive factor in determining registrability of disputed mark under Article 4(1)(viii) in Japan. Absence of complaint from Romeo Gigli shall not be construed that he has consented to register his name in the territory of Japan explicitly or implicitly.
Unless applicant produces evidence regarding a consent from Romeo Gigli otherwise, disputed mark shall be refused to register based on Article 4(1)(viii) of the Trademark Law.
According to the JPO database, ECCENTRIC SRL filed an appeal against the Board decision to the IP High Court in November 2017. The Court decision will be rendered within a couple of months.
Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM