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])