If you do not want to search through databases and lists of names of residents of Japan to get a trademark, you can breathe a sigh of relief–if you file from April of this year.
What’s the Matter with the Old System and What Will Change?
Japan’s Trademark Act has limited registration of personal names. The Trademark Act Article 4, Section 1 Paragraph 8 says that if a name to be registered in a trademark belongs to multiple persons, then the applicant has to gain acceptance of all those with the name residing in Japan, before the Japan Patent Office (JPO) examiners will allow registration:
[A request for trademark registration with] the name, well-known pseudonym, professional name or pen name of another person, or well-known abbreviation thereof (except those the registration of which has been approved by the person concerned) [will be rejected.] [1; boldface added for emphasis]
This can be a prohibitive barrier for filers–for example, needing to check the phone books or other registers to verify if anyone with “the name” exists, first of all, and then getting permission to use from all with the name, second of all! (John Smith? Taro Suzuki?)[2]
However, from April 1, 2024, applicants will be able to file more freely. According to a new order, the applicants (and JPO examiners) will not have to check existence of persons with the filed-for name so minutely or seek universal permission to use it. This change of rules is particularly good news for fashion goods and the like where personal names are often used.[2]
What will be the New Standards for Examination?
If the examiner confirms that
(1) the name does not belong to anyone widely known other than the applicant, and
(2) the applicant can show “considerable/appreciable” relation to the requested name (e.g. it is the applicant’s own name) and the intent is not “illegitimate” (e.g. not “trolling”),
then the trademark registration may be allowed.[2]
What Applications Will Benefit from this Change?
The update to the Trademark Act goes into effect April 1, 2024. It applies to applications filed after that date. (Paris Convention priority claims are allowed if the Japan filing is on or after April 2024.) Especially if you are considering a filing for a name that might belong to some person in Japan, do a search but remember it may be much easier to get it if you file from April.[2]
* The information provide
d on this website is for informational purposes only and is not intended as legal advice.
** For questions or inquiries, please contact us for more information.
Contact: Taro Yaguchi
Sources
[1] Trademark Act. English translation. “” https://www.japaneselawtranslation.go.jp/en/laws/view/4483 Japanese Law Translation. Update: Act No. 42 of 2021. Accessed February 12, 2024.
[2] “他人の氏名を含む商標の登録要件が緩和されます [Requirements for registering a trademark including another person’s name to be loosened]” https://www.jpo.go.jp/system/trademark/gaiyo/seidogaiyo/shimei.html Japan Patent Office. Updated January 5, 2024. Accessed February 12, 2024.
Header image by Markus Winkler from Pixabay
