On August 7, 2019, the Japan IP High Court ruled to dismiss an appeal by Ken Kikuchi, a Japanese jewelry designer, who contested a decision by the Japan Patent Office (JPO) to deny trademark registration for a composite mark consisting of a word “KEN KIKUCHI” with an eagle device under Article 4(1)(viii) of the Trademark Law.
[Judicial case no. Heisei31(Gyo-ke)10037]
Disputed mark (see below) was filed by Ken Kikuchi on May 23 ,2017 covering various goods in class 14, 18 and 25 including jewelry and accessories. [TM application no. 2017-69467]
Since 2000, Ken Kikuchi allegedly has been designing and manufacturing affordable elaborate silver jewelry under the brand of his name “KEN KIKUCHI”. As a result of business expansion (14 brick-and-mortar stores in Japan, 4 stores in foreign counties) and advertisements from television, magazines, the designer’s name has acquired better reputation in the industry.
Refusal decision by JPO
The Japan Patent Office (JPO) refused the mark based on Article 4(1)(viii) of the Trademark Law, on the ground that the literal element of disputed mark can be perceived to identify a private individual named “Ken Kikuchi”. According to white pages, evidently there exist several Japanese people with the same name. If so, disputed mark shall not be allowed for registration since it contains a name of living person per se.
Article 4(1)(viii) of the Trademark Law prohibits 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.
The Appeal Board of JPO also sided with the examiner’s refusal on the same ground. [Appeal case no. 2018-7529]
To contest the administrative decision, the designer filed an appeal to the IP High Court on March 25, 2019
IP High Court Ruling
The court dismissed the allegation entirely, by stating that:
- “KEN” and “KIKUCHI” are both commonly used names to Japanese people.
- Literal elements of disputed mark shall be perceived as a name of person even if the name is written in alphabet, given it has become popular to write a full name on the passport, credit card and others in alphabet.
- Article 4(1)(viii) shall be construed to comprehend a name of person written in alphabet.
- It is not relevant to consider reputation of disputed mark in applying the article since it aims to protect personal rights of a living individual.
- Irrespective of the fact that a person named “Ken Kikuchi” surely exists, applicant failed to prove consent from the person.
Based on the foregoing, the IP High Court sided with the JPO and upheld the refusal decision.
Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM