While his jewelry brand KENKIKUCHI has been trademarked in China, Ken Kikuchi’s registration application in Japan was turned down, much to his chagrin.
“I cannot believe the Japanese government really respects intellectual properties as its policy insists,” said Kikuchi, the designer of KENKIKUCHI. “I don’t know why I have to continue paying taxes to Japan.”
Kikuchi discovered a brand difficulty unique to Japan: trademarks named after designers are currently not being registered.
The Japan Patent Office and the Intellectual Property High Court have recently taken strict approaches, rendering it difficult for many namesake brands in the fashion industry, such as Takeo Kikuchi, to have themselves newly trademarked.
Given that the content of legislation has not changed for a long period, it is a mystery that such brands are not being currently recognized. Insiders consider an Intellectual Property High Court ruling in 2019 as one of the factors marking the shift.
PHONE BOOK CHECKED FOR RULING
The jewelry brand KENKIKUCHI, which is well known for the patronage by Steven Tyler, the vocalist of the rock band Aerosmith, saw its request to trademark the logo including its name rejected by the Japan Patent Office in 2018.
KENKIKUCHI appealed the rejection in court but the ruling was the same. The court decision was based on Item 8 in Paragraph 1 of the Trademark Law’s Article 4, which stipulates that trademarks containing “the name of another person” should not be registered without permission from the individual having the name.
According to the verdict and other sources, the Japan Patent Office refers to the Hello Page telephone book as a means to confirm if people of the same names exist.
As the brand name is shown in alphabetic letters, the brand is supposed to gain consent from all those using the same name pronunciations whether they are famous or not even though their kanji are different.
“It is unrealistic to get the green light from all individuals whose names read in the same way,” said lawyer Ryutaro Nakagawa, who is knowledgeable about the intellectual property law.
At least a few years earlier, sets of characters that may not seem like family and given names, such as “arrangements of words with no spaces between them” that use “either upper- or lower-case letters, but not both,” were accepted as trademarks at times.
The logo KENKIKUCHI has a line obliquely extending from the first “K” toward the right bottom and ending at the third letter of “N.” Another line obliquely stretches out of the last character, “I,” to the left bottom to reach “K” in the fourth position.
For those reasons, the given and family names “Ken” and “Kikuchi” were regarded as visually separable in the logo design. KENKIKUCHI tried to file an appeal but its argument was rejected by the Supreme Court.
“The ruling was much severer than in the past,” Nakagawa recalled thinking over the decision.
NAMESAKE BRANDS OUT OF LUCK
Nakagawa said he had an even stronger sense of crisis when the Intellectual Property High Court issued a much stricter ruling the following year. A similar judgment was issued for TAKAHIROMIYASHITATheSoloist. in 2020.
TAKAHIROMIYASHITATheSoloist. had already presented a succession of creations at the Paris Collection and made its name as a brand with high standing in the fashion community.
The logo does not separate the first and last names “Takahiro” and “Miyashita,” and includes non-name sets of characters likewise. But it was not recognized.
The Japan Patent Office’s argument was upheld that permission of all individuals called “Takahiro Miyashita” is essential because one can easily understand the latter part of the brand name is comprised of the definite article “the,” the word “soloist” and a period.
The content of Item 8 in Paragraph 1 of the Trademark Law’s Article 4 has not been revised for many years. The Japan Patent Office has not amended its examination criteria lately.
However, the screening by the Japan Patent Office, according to Nakagawa, became far tougher around that time.
“If namesake brands apply for new trademarks now, their requests are nearly automatically denied under the current situation, when there are people who have the same names,” said Nakagawa.
The issue is notably problematic for newer mid-level brands, but it appears difficult as well even for long-established ones whose trademarks have already been registered to evade problems.
In 2020, the Japan Patent Office decided it does not allow YOHJI YAMAMOTO to use its tradename in katakana, whereas its alphabetic logo was officially registered in 1984.
Trademarks are important when brands expand sales outside Japan, since local business partners expect certain brands to be recognized in their home countries. As brand licenses are issued based on registered trademarks, operators cannot go without them.
Registration as trademarks is also indispensable as a countermeasure against counterfeit products, meaning that having themselves formally registered is extremely significant for designers’ brands.
Asked about the issue, a public relations official of the Japan Patent Office said, “We can say nothing about individual cases’ screening results and we have been making our decisions taking the law into account.”
Another Japan Patent Office insider admitted that “inspectors are seemingly alike struggling to make a series of judgments” on whether to accept trademark applications that were recently submitted.
“The Japan Patent Office’s decisions are ultimately restricted by the rulings of the Intellectual Property High Court,” said the insider. “Now that such verdicts have been released, it is in part unavoidable for the office to deal with applications indifferently.”
TROUBLE ONLY IN JAPAN
Discussions at trademark examinations and court trials center on how the sentence “the name of another person” should be construed. Japan’s standards are much more rigorous than those of other nations.
Nakagawa said the U.S. trademark law has similar wording to Japan’s but the guidelines on legal applications state permission is necessary only when the individual is a famous figure.
In China, trademarks constituting violations of the right to the use of one’s name are considered unacceptable, but certain instances are deemed as infringements as long as widely known citizens’ names are used by different individuals.
South Korea stipulates in its legislation that only “the name of another famous person” should not be used by others.
A sentence resembling one in Item 8 in Paragraph 1 of the Trademark Law’s Article 4 was first introduced in 1909 to coincide with the revision of the older version of the legislation. Nakagawa noted that it was aimed to stop others from registering someone’s name.
“The recent applications of the Trademark Law apparently go against its objective of helping to develop Japan’s industries,” said Nakagawa. “If the situation does not improve for the time being, a possible legal reform needs to be discussed.”