Revisions of Examination Manual for Trademarks Consisting of a Name of a Historical Figure
“Handling of trademark applications consisting of a name of a historical figure (a name of a well-known and notable individual)” in the Examination Manual for trademarks has been under review for some time. On October 21, 2009, the JPO announced that it has finally been revised. Basically, one should note that trademarks consisting of a name of a historical figure (a name of a well-known and notable individual) may fall under the trademark described in Trademark Law Article 4(1)(vi) (trademark that will be offensive to public order and morals) and consider all the exemplified facts and determine whether or not the trademark falls under the trademark described in the afore-mentioned Article.
A name of a well-known historical figure has a strong potential to attract customers. Disputes often arise between those that wish to use it as a trademark and those that object to it out of love or respect for the figure. However, the trademark law does not provide any clear stipulations against registering a person’s name (other than a name of a person who exists at the present) as a trademark, and the decisions were left completely up to the appeal trial or the court until now.
The revised Examination Manual for trademarks defines “a name of a historical figure,” which is the subject of the afore-mentioned Article, as a name of a well-known and notable individual who has passed away, including foreigners. A name of a person who exists at the present will not fall under “a name of a historical figure.” In addition, “a name of a figure” must be one that a certain figure is widely recognized for; aside from an actual full name, an abbreviated name or assumed name such as screen name can be recognized as “a name of a figure.” The notability of the figure, the history of the application, and the relationship between the figure and the applicant will be considered in a comprehensive manner, and whether the trademark falls under the Trademark Law Article 4(1)(vi) will be evaluated.
The above revision introduces a certain guideline on the handling of trademarks of a name of a historical figure. Having reviewed the disclosed contents of the Examination Manual, however, we predict that it will remain extremely difficult to register a name of a historical figure as a trademark. One should be careful when employing a name of a historical figure for a trademark.