1. 1. Question Presented

Can I register my name as a trademark? The answer to this question varies depending on whether the "name" is a "surname," "given name" or "full name."

(1) If the name is a "surname," the registrability depends on whether the surname is common or not. If it is common in Japan, the trademark consisting solely of the surname is not considered inherently distinctive and, thus, such trademark application will be refused without secondary meaning (acquired distinctiveness).

(2) If the name is a "given name," it will be registered as a trademark provided that other general requirements for trademark registration are met.

(3) If the name is a "full name," it can be registered unless there are no persons who have the same full name. In other words, the problematic situation will be: What if my full name is accidentally the same as another person's? The following case, H28 (Gyo-ke) No. 10066, the IP High Ct., August 10, 2016, will answer this.

2. 2. Prosecution History

The Plaintiff filed a trademark application for "KAZUO YAMAGISHI" (in Japanese) ("Subject Mark") designating "Chinese noodles eaten with dipping soup; Cooked noodles eaten with dipping soup; etc." (Class 30) and "Restaurant services featuring noodles eaten with dipping soup" (Class 43) on November 19, 2013. Both of the Examiner at the JPO and the Appeal Board of the JPO refused the trademark application on the grounds that the trademark applied-for consists of another person's full name and the Plaintiff did not obtain his consent. Then, the Plaintiff filed an appeal at the IP High Court on March 16, 2016.

3. 3. The IP High Court's Ruling

(1) Purpose of Article 4(1)(viii) of the Japanese Trademark Law

Article 4(1)(viii) of the Japanese Trademark Law stipulates that:

No trademark shall be registered if the trademark contains the portrait of another person, or the full name, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof (except the person concerned gives his//her consent to registration thereof).

Article 4(1) has various sections to refuse a trademark application. For example, Articles 4(1)(x) and (xv) aim to prevent registration of a trademark which is likely to cause a confusion with another person's well known mark. In view of the fact that Article 4(i)(viii) is set in addition to Articles 4(1)(x) and (xv), the purpose of Article 4(i)(viii) should be interpreted to protect another person's personal (moral) rights to the portrait or full name. H15 (Gyo-hi) No. 265, Supreme Court, June 9, 2004; H16 (Gyo-hi) No. 343, Supreme Court, July 22, 2005. Therefore, if a trademark containing another person's full name is registered without his/her consent, his/her personal (moral) rights will be damaged.

(2) Applicability of the Subject Mark to Article 4(1)(viii)

The IP High Court found the following:

- In view of the actual situations of a person's name in Japan, "KAZUO" and "YAMAGISHI" in the Subject Mark can be recognized as the given name and surname, respectively, and "KAZUO YAMAGISHI" as a whole can be recognized as a person's full name;

- According to telephone directories in various areas, there are at least more than 10 persons named "KAZUO YAMAGISHI" in Japan; and

- In view of the above, the Subject Mark is a trademark containing another person's full name;

- The Plaintiff obtained a consent from Mr. Kazuo Yamagishi, who was the boarding member of the Plaintiff company;

- However, the Plaintiff did not obtain consents from other "Mr. Kazuo Yamagishi"; and

- In conclusion, the Subject Mark cannot be registered because it falls under Article 4(1)(viii).

(3) The Plaintiff's Allegations and the IP High Court's Opinions

(i) The Plaintiff alleged that: the cases applied to Article 4(1)(viii) should be restricted to cases where (a) it infringes another person's publicity right (i.e., the case where another person's full name is well known) and (b) it infringes another person's exclusive right, other than the publicity right, to the full name (i.e., the case where it can be objectively judged from the contents of the trademark application that another person has a feeling of discomfort); and that the Subject Mark does not apply to either of (a) or (b) above.

However, the IP High Court held that: the purpose of Article 4(1)(viii) is, as mentioned above, to protect a person's personal (moral) right to the full name; that this Article requires a "pseudonym, professional name or pen name, or abbreviation thereof" to be famous while it does not require a "portrait or full name of another person" to be famous or well known; that it is not a direct requirement of this Article that a person's personal (moral) right will likely be infringed; that in view of the purpose and the language of Article 4(1)(viii), the "full name of another person" should not be restricted to famous or well-known ones only; that application of this Article should not be restricted to only cases where the submitted evidence shows another person's personal (moral) right is or will likely be infringed, and that is to say, it should be interpreted that registration itself of a trademark containing another person's full name without his/her consent will likely infringe his/her personal (moral) right.

(ii) The Plaintiff alleged that the JPO's interpretation of Article 4(1)(viii) is criticized by many scholars. Their theories are that: the purpose of this Article is to protect a person's personal (moral) rights if his/her full name is used by another person as a trademark and if he/she is objectively judged to have a feeling of discomfort by causing confusion among consumers; and that in view of this purpose, fame or scarcity should be necessary to the extent that a person's personal (moral) rights are objectively determined to be damaged without his/her consent although this interpretation is against the language of this Article. Also, the Plaintiff alleged that there are in fact registrations of trademark containing another person's full name.

However, the IP High Court held that: the theories cited by the Plaintiff do not bind the Court's judgement; and that even if there are other registrations of trademark containing a person's full name, such facts do not affect the present case.

(iii) The Plaintiff alleged that: it is not reasonable that the JPO refused the Subject Mark based on the telephone directories because there are similar cases where trademarks containing persons' full names probably listed in the telephone directories were registered and also because not all the full names listed in the telephone directories are as recorded in the census register.

However, the IP High Court held that: it is reasonable because other people named "Kazuo Yamagishi" were found in the telephone directories at the time of the decision by the Appeal Board of the JPO, in addition to "Kazuo Yamagishi", who is the board member of the Plaintiff company; and that if a trademark containing "Kazuo Yamagishi" is registered without consents from other "Kazuo Yamagishi," the possibility of infringing their personal (moral) rights cannot be denied.

(iv) The Plaintiff alleged that: in other countries such as the US, EU, Germany, the UK, France, South Korea, Taiwan, Singapore and China, a trademark application is not refused only because the trademark contains other person's full name; and the decision of the Appeal Board of the JPO is against the international harmonization.

However, the IP High Court held that in view of Article 6(1) of the Paris Convention, each Member State can determine requirements for a trademark application and registration, so the decision of the Appeal Board of the JPO is not against the international harmonization.

(v) The Plaintiff alleged that: according to Article 6quinquies of the Paris Convention, a person who has a business place, address or nationality in other countries and has obtained a trademark registration can obtain a registration of a trademark containing the person's full name, like the Subject Mark, in Japan while a person who has a business place, address or nationality only in Japan cannot obtain such trademark registration; and that this is against Article 14 of the Constitution because the Japanese or Japanese corporations are unfairly treated.

However, the IP High Court held that: while Article 6quinquies A of the Paris Convention stipulates a trademark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries, Article 6quinquies B stipulates such trademark may be denied registration or invalidated when it is of such a nature as to infringe rights acquired by third parties in the country where protection is claimed; that a personal (moral) right protected under Article 4(1)(viii) of the Japanese trademark law can be interpreted as "rights acquired by third parties" mentioned above; and that the decision of the Appeal Board of the JPO does not bring about an unfair treatment of the Japanese or Japanese corporations.

(vi) The Plaintiff alleged that even a trademark containing another person's full name should be registered if the trademark has been used for a long time and has come to have recognition among relevant consumers.

However, the IP High Court refused this allegation of the Plaintiff because, regarding Article 4(1)(viii), there are no Articles corresponding to Article 3(2) stipulating the so-called "secondary meaning" under the Japanese trademark law.

4. 4. Our Comments

As shown above, it is difficult to register a trademark containing your full name if there are other people who have the same full name. In the case of a full name of a "foreign person," however, it may be in practice difficult for the JPO to find another person who has the same full name. In that case, you may have a chance to register your "full name" as a trademark in Japan. If the JPO still finds another person who has the same "full name," it may be an option to register your "surname" and "given name" separately and use them together, provided that the "surname" and "given name" meet normal requirements for trademark registration.