Pablo Escobar, Zhang Wei or Shohei Ohtani?

On April 1, 2024 the Japanese trademark office set about accepting Letters of Consent for coexistence of identical or similar trademarks in the Register. Another important change to Japan's trademark act is in relaxing its absolute nature of refusal of trademarks containing full names (surnames and given names) of living individuals anywhere in the world.

Article 4(1)(viii) of the Trademark Act until March 31, 2024 read as follows:

    Article 4(1) - Unregistrable Trademarks

Notwithstanding the preceding Article, no trademark may be registered if the trademark:

(viii) contains the portrait of another person, or 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);

This ground for refusal is meant to protect individuals' right to control how their names are used. If your trademark includes the name of a living individual, it could only be registered with the written consent of that individual. The law did not stipulate that the name had to be one that identifies a particular individual. As it happens, I know many people with exactly the same full name as mine but would find it impractical to ask all of them to provide consent to registration of my name as a trademark.

The flaw was increasingly real and dire for the design industry, especially in the field of fashion, communication, interior and product design, where the names of creators and founders take the central role in communicating the appeals of their goods and services to consumers. In this age of search engines, applications for trademarks including the full names of such designers and founders would easily have been refused if no pains are taken to obtain a written consent from each and every person with the same names.

The revision to the Trademark Act has relaxed the consent requirement by a) limiting "the name of another person" in the above provisions to those well-known in the relevant field of goods and services for which the trademark is to be used while it seeks to avoid abuse by b) requiring that the name in the trademark be reasonably related to the applicant and that the application not be filed unfair purposes.

In effect, the amendment has made sure that only applications for trademarks containing full names of others that can really identify those particular living individuals would be objected to and that the required "reasonable relation" between the applicant and the name in the applied-for mark can be readily substantiated by showing that the applicant had continually used the mark prior to the filing, not to mention that the name is the applicant's own, its founder's or its important person's.

Following this welcome revision, this past April has seen quite a number of new applications filed for trademarks consisting solely of or featuring full personal names including: JAMES MARTIN, Fujita Den, Yun Bao, Yamada Juro, FRANCO ZILIANI, Kato Jin, VALORE MONTON, Monty Montgomery, Yamagishi Kazuo, KANAKO SAKAI, Tomoko Taguchi, Ryota Murakami, Diane Bonheur JAPONAIS, Valore Monton, Mihara Yasuhiro, Issei Higa, XINGFUDAO, Melady Brown, WILLIAM MORRIS and so forth both in kanji and Roman characters.

While we will see how these applications will be examined on a case-by-case basis, they all have much better prospects of registrability than before with no need to obtain consent from those who happen to have the same full names. So would applications for Zhang Wei (or David Smith, apparently the most common names in the world) or less common but by no means eccentric names like Shohei Ohtani (perhaps the most famous baseball player in the world) provided that the relaxed requirements a) and b) above were met.

Meanwhile, an application for Pablo Escobar, the name of the deceased “king of cocaine” if filed in Japan by Escobar Inc., a Puerto Rican company founded by his brother, would go unchecked by Article 4(1)(viii), not because it is filed for fair purposes but simply because Pablo Escobar is dead already. Such application would likely be rejected as a mark contrary to public policy under the preceding Article 4(1)(vii), an equivalent of Article 7(1)(f) EUTMR, although possibly a more notorious name AL CAPONE has in fact been registered in Class 34 in Japan.

Yasuhiro Suzuki
Japanese Patent & Trademark Attorney
Takeuchi IP Office, P.C.