No Violation of the US President’s Personality Rights

The Appeal Board of Japan Patent Office (JPO) admitted registration of a mark consisting of jigsaw puzzles design and “TA TRUMP” (see below), saying that it does not violate personality rights of Mr. Donald John Trump, the President of the United States.

 

MARK IN QUESTION

A Japanese individual filed a trademark application for the mark consisting of jigsaw puzzles design and a word of “TA TRUMP” (see below) on November 23, 2016 by designating “psychology education cards” in class 16.

JPO examiner refused the mark on the grounds that it comprises a famous abbreviation of Mr. Donald John Trump, the President of the United States and presumably the applicant would not obtain consent from him.

 

Article 4(1)(viii)

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 ruled the article has aimed to protect personality rights of a living individual. A diminutive of foreign celebrity falls under the category of “abbreviation” even if his/her full name is not so familiar among Japanese citizen.

 

To contest the refusal, the applicant filed an appeal on August 11, 2017.

 

Appeal Board

In the decision rendered on January 10, 2018, the Appeal Board overruled the refusal and admitted registration of the mark in question by stating that:

  1. “TRUMP” has been known as an English term meaning playing cards among the public in Japan.
  2. In the meantime, “TRUMP” admittedly corresponds to a surname of Mr. Donald John Trump and it becomes evident he is a well-known person as the 45th President of the United States to be called “President Trump”.
  3. Overall appearance of the applied mark easily reminds us of a kind of playing card back designs.
  4. If so, the term of “TRUMP” depicted in the mark shall not be considered to suggest President Trump at all.
  5. Based on the foregoing, accordingly it is groundless to refuse the mark based on Article 4(1)(viii).

Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM

 

Trademark Abbreviations

A company should be mindful of how the public perceives and uses its trademarks in Japan.

Japanese is prone to abbreviate trademarks. Occasionally, the abbreviation has no resemblance to its original name.

For example, ABERCROMBIE & FITCH is popularly called “ABA-KURO” among general public in Japan. Likewise, DOLCE & GABBANA can be called “DOLU-GABA”. STARBUCKS COFFEE is known as “SUTABA”. TOMMY HILFIGER is called “TOMI-HIRU”.

Where a trademark is composed of five sounds or more, you should mind that general public in Japan gets to call the mark in abbreviation contrary to brand owner’s intention.

BMW is even called as “BI-EMU”.

Most popular name recognized in abbreviation is McDonald without doubt. We seldom call “McDonald” as it is. One of the most popular fast-food chains and one of the top franchises in the world has always been called “MAKUDO” or “MAC”.

A combination mark is an easy target for abbreviation as well.

BOTTEGA VENETA is call “BOTTEGA”. LUIS VUITTON is known as “VUITTON”.

Trademark abbreviations may serve as a barometer for well-recognition of the mark among general public in Japan. In the meantime, abbreviations or nicknames used by the public are not protected under the respective registrations given that they have no resemblance to the original names e.g., “ABA-KURO” and “DOLU-GABA”.

Using abbreviations, nicknames, and acronyms as trademarks may be appealing from a marketing perspective, however, trademark protection for an abbreviation has to be sought independently from the trademark protection that its extensive version might be already enjoying, and vice versa.

A company that seeks trademark protection for an abbreviation should abide by the standard trademark requirements.