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.



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


Appeal Board reversed examiner’s rejection in the BOB trademark dispute

In an administrative appeal disputing trademark similarity between TM registration no. 5719997 for word mark “BOB” and a junior application no. 2016-49394 for the “bob” device mark represented as below, the Appeal Board of the Japan Patent Office decided that both marks are deemed dissimilar and reversed examiner’s rejection.
[Appeal case no. 2017-10420, Gazette issued date: January 26, 2018]


TM Registration no. 5719997

The cited mark, consisting of a word “BOB” in standard character, was registered on November 21, 2014 by designating various items of furniture in class 20.


Junior Application no. 2016-49394

Applied junior mark consists of the following “bob” device mark.

It was applied for registration on May 5, 2016 by designating furniture in class 20.

As a result of substantive examination by the JPO examiner, applied mark was rejected due to a conflict with the cited mark based on Article 4(1)(xi) of the Trademark Law.
Subsequently, the applicant filed an appeal against the rejection and disputed dissimilarity of both marks.


Board decision

In the decision, the Appeal Board held that:

applied mark is a device in dark brown, consisting of two circles protruding upward on the left side, a circle connected with the two circles in line, and wavy lines underneath.

From appearance, even if it may happen the circle design is recognized as a stylized design of “bob”, the Board opines that the design is unlikely to be considered as alphabetical letters due to a remarkable extent of stylization or abstraction. Thus, it is reasonable to conclude that applied mark shall not give rise to any specific pronunciation and meaning.

Based on the foregoing, in the assessment of trademark similarity, the Board decided that:

Obviously, both marks are distinguishable in appearance. As long as applied mark does not give rise to a specific pronunciation and meaning, it is meaningless to compare the pronunciation and meaning of both marks. Consequently, the Board finds no ground to affirm examiner’s rejection from visual, phonetic, and conceptual point of view.

Astonishingly, JPO considered the bob device mark is unreadable.

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