by Yoshiko Osawa, International Trademark SpecialistIn October 2009, the Japanese Patent Office (JPO) revised the trademark examination guidelines to add a section on the handling of trademarks which use names of historical figures. In the past, the Japanese Trademark Law had no provisions forbidding the adoption of deceased person’s name as a trademark, let alone provisions for historical figures’ names in terms of trademark registration, and the Office felt new revisions were in order. Note that this standard for examination applies to all historical figures regardless of nationality.In particular, concerns were raised over some of the potential violations that could occur with regards to the latter. For one, because of the public figure’s market appeal to sell products, a third party, unrelated to the deceased, could register the name as a trademark, and harm the regional industry associated with the person. In addition, wrongful association of goods with an image could tarnish the reputation of the historical figure, and anger the descendants. There is also the possibility that a third-party will try to benefit from status of famous person, and violate social morality by using the name for wrongful commercial activities. Moreover, some felt granting exclusive rights to the use of a public figure’s name itself is wrong.Keeping these potential violations in mind, the government came up with the following examination criteria to assure that registering the famous person’s name does not infringe on the proper business order and antagonize and offend the descendents of the public figure: 1. What is the level of recognition and awareness of the name at all levels of society? For example, what is the level of esteem the name is held morally, historically and culturally by society, and does it have market appeal to sell products? 2. To what extent is the name held in social and cultural esteem? (i.e., how does society as a whole and the residence of the region in particular, hold the person in their esteem?) 3. What effect does registering the trademark with the famous person’s name have on society as a whole, and on the local economy, including the family member(s) managing the deceased person’s estate, in particular? 4. What is the relationship between the famous person and the family? (i.e., does the family member have the rights to grant permission to register the name as a trademark?) 5. How did the registrant come to register the name? (i.e., what are the reasons and motives for adopting the name for registration?) 6. How is the famous person’s name going to be used? (i.e., what is the relationship between the public figure with the designated goods and services? Does the product bearing his or her name have a clear connection with the name and its image?) Note that this standard for examination applies to all historical figures regardless of nationality.Therefore, in order to avoid violating the public order clause of the Japanese Trademark Law, Article 4, paragraph 1, item 7, when registering a trademark that involves the name of a historic figure, be prepared to provide explanations for the above examination criteria.
