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Common naming of goods and services refers to a name that was originally named as a name for goods or services, but as a result of being widely used, it is no longer recognized as an identification mark for one's own or other goods, and is now used as a general name. It means what happened.
If this common naming occurs before the decision is made, the trademark cannot be registered (Article 3, Paragraph 1, Item 1 of the Trademark Law), and if it occurs after the trademark is registered, even if an infringement lawsuit is filed, the trademark right will not be effective. Exercise may be restricted (Article 26, Paragraph 1, Items 2 and 3 of the Trademark Law).
Disadvantages and causes of common naming
Disadvantages of using common names
If a common name is created before trademark registration, it will be rejected as a common name. Even if a trademark is registered incorrectly, there is a possibility that the trademark right will be extinguished due to an opposition and invalidation trial. If a trademark is registered and then becomes a common name, the trademark right will continue to exist, but the effect of the trademark right cannot be exerted on third parties.
Causes of common naming
① When an innovative product or service is created
When an innovative product or service that did not previously exist is created, there is no name representing that product or service, so traders may use the trademark as a synonym for similar products or services. As the word comes to be used, it may lose its distinctiveness and become a common name.
②When the product or service becomes outstanding
When a trademark stands out among similar products and services, it becomes well-known and consumers may become less aware of the origin of the product or service represented by the trademark. As a result, a trademark may be perceived as representing all goods and services of the same type, and may lose its distinctiveness and become a common name.
③ When the trademark owner's management is lax
If appropriate measures such as sending a warning letter are not taken in the early stages when a trademark begins to be used as a common name, it will gradually lose its distinctiveness and become more likely to become a common name. Additionally, if a name is treated as a common name in a dictionary or the like, but it is left unchecked without taking any action, it is likely to be treated as a common name.
Examples of common naming
We will introduce actual cases in which the Patent Office or the court determined that the name had become a common name.
Cases judged by the Patent Office
① Sunny lettuce
"Sunny lettuce" is a word uniquely coined in Japan, and similar varieties are called red leaf lettuce in English-speaking countries. An application for trademark registration for the name "Sunny Lettuce" was filed in 1978, but it was rejected in 1985 as it was found to be a common name.
"Not only is it cultivated in Japan, and it is recognized that it is available all year round, but greengrocers, supermarkets, department stores, etc. sell leaf-type lettuce, a non-heading lettuce with brownish-brown leaf tips, as ``sunny'' along with other vegetables. There is a fact that it is sold under the name "lettuce".~Omitted~ Based on the above facts, traders and consumers of this type of product can only understand and recognize the product as a character to express that it is "sunny lettuce".It must be said that it cannot be recognized as an identification mark for one's own or other products."
*Excerpt from Complaint 1977-2936
Cases decided by the court
① Seirogan
``Seirogan'' is a pharmaceutical product whose main ingredient is JP wood creosote. Taiko Pharmaceutical applied for a trademark for ``Seirogan,'' and it was once registered as a trademark. However, since then, it has been recognized as a general name twice, in 1974 (a lawsuit to revoke a trial decision against an invalidation trial) and in 2008 (a case requesting an injunction against unfair competition).
“For many years after that,As a result of being used as the name of the drug nationwide by an extremely large number of unspecified vendors.(Coupled with the fact that the drug itself became well known to the private sector as an impressive home remedy with a strong medicinal odor and flavor)These words should have been widely recognized among the public as general names of the drug itself, without any power to indicate the origin, at the latest at the time of registration of the Trademark.And,”
*Excerpt from Tokyo High Court, No. 35 of 32, Case of Litigation for Revocation of Trial Decision
②Kyoho
``Kyoho'' is a popular grape, but it was originally a trademark name, and the name of the variety is ``Ishibashi Sente (Centennial)''. A trademark application was filed in 1954 and the trademark was registered in 1955. Subsequently, in 2002, the company sought an injunction against a company that labeled grape shipping packaging materials as ``Kyoho'' and sold them. However, the request was denied as it was determined to be a common name.
"The word "Kyoho" is not recognized as a trademark that should be used only for the products of a specific company, but is recognized as a general name representing the grape variety of the subject variety, which is a variety of grape. It is recognized that Therefore, it is appropriate to recognize that the word "Kyoho" is a common name (Article 26, Paragraph 1, Item 2 of the Trademark Law) representing the grape variety of the subject variety, which is a variety of grape."
*Excerpt from Osaka District Court No. 9153 of 2001 (Wa) Requesting Injunction for Trademark Infringement
③ Lucky scroll
Shofukumaki refers to the ``futomaki'' eaten on Setsubun. The company, which originally provided Japanese cuisine, received trademark registration in 1988. Subsequently, the company sought an injunction against a major supermarket for using a mark containing the word ``Shofukumaki.'' However, it was recognized as a common name and the request was denied.
``Daiei, which has a large number of stores nationwide, published a product advertisement for sushi rolls called ``Shofukumaki,'' and even before that, ``Shofukumaki'' had become a common name for Setsubun sushi rolls. It can be said that it is inferred that this was the case. ～Omitted～Therefore, it can be said that ``Shofukumaki'' became a common name for a type of sushi roll at the latest in 2005."
*Excerpt from Osaka High Court No. 2836 of 2008, Appeal case requesting injunction for trademark infringement, etc.
Certification of common name
There is no uniform standard for determining whether a name is a common name, and it is extremely difficult to determine whether a name is eligible for common name designation. However, the following points may be helpful.
well-known subject
There are court precedents in which the entity that is recognized as a common name is based on consumers such as businesses and industries, and there are court precedents in which the entity that recognizes it as a common name is based on consumers including general consumers. Comprehensive judgments are made taking into consideration the nature of the product, etc.
<Based on those skilled in the art>
"In the food industry,～Omitted～ The terms “buffered lactic acid” and “kansho lactic acid” also refer to the pH adjuster, which is a type of organic acid.It is appropriate to accept that it was a common name."
*Excerpt from Tokyo High Court 258 (Gyoke) No. XNUMX Request for rescission of trial decision
<Based on users including general consumers>
"Among users such as general consumers, grape producers, and fruit and vegetable wholesalers,The word "Kyoho" is not recognized as a trademark that should be used only for the products of a specific company, but is recognized as a general name representing the grape variety of the subject variety, which is a variety of grape. It is recognized that Therefore, it is appropriate to recognize that the word "Kyoho" is a common name (Article 26, Paragraph 1, Item 2 of the Trademark Law) representing the grape variety of the subject variety, which is a variety of grape. ”
*Excerpt from Osaka District Court No. 9153 of 2001 (Wa) Requesting Injunction for Trademark Infringement
The article-by-article commentary on the Industrial Property Law (21st edition) states as follows:
``Even if general consumers, etc. are aware that a specific name is the general name of the product or service, it is not a common name.The problem is a matter of awareness within a particular industry, and therefore, for example, if a certain trademark becomes so famous that the general public perceives it as the common name for the product, it becomes difficult to sell the product at the normal retail level. Even if a trademark is used as a general name for a product when purchasing it, that alone does not mean that the trademark has become a general name."
Scope of knowledge
There is a court precedent that states that recognition of a common name under Article 26, Paragraph 1, Item 2 does not necessarily require nationwide recognition, and that one region is sufficient.
``In the Kyushu region, centered on Kagoshima Prefecture, it is widely accepted that shaved ice topped with condensed milk and fruit is commonly called ``Shirokuma.'' It is recognized as a common name in the district. and,The "common name" referred to in Article 26, Paragraph 1, Item 2 of the Trademark Act does not need to be common throughout Japan, but should be sufficient if it is a common name in one region."
*Osaka District Court No. 12855 of 1996 Appeal case requesting injunction for trademark infringement, etc. Summary
Exposure as a common name in the media
Exposure as a common name in the media, including publications such as dictionaries, is sometimes considered as evidence that the name has become a common name.
・It was taken into consideration that Shofukumaki is listed on supermarket flyers and in dictionaries.
・It was taken into consideration that Kyoho is listed in Japanese dictionaries and illustrated encyclopedias.
Whether or not measures for common naming are implemented
In court cases, etc., it may be mentioned whether "measures for common name conversion" were taken when determining whether the name was changed to a common name.
<Case where common naming measures were approved>
“It is acknowledged that “QR Code” and “QR Code” are sometimes recognized as a type of two-dimensional code standard,On the other hand, the defendant has the trademark registration in question, and as mentioned in (a) above, the defendant displays the message "The QR code is a registered trademark of Denso Wave Co., Ltd." and displays the symbol "○R." In addition, as mentioned in (a) above, companies other than the defendant, including the plaintiff, use "QR Code" or "QR Code" on their websites and advertisements. Considering that the “QR code” is indicated as a registered trademark of the defendant,It cannot be accepted that "QR Code" or "QR Code" is always recognized as only a type of two-dimensional code standard, and it may be used in a manner that performs the function of identifying one's own and other products, etc. I should say get it. ”
*Excerpt from 2018 (Gyoke) No. 10059, Case of Request for Cancellation of Trial Decision
*In a lawsuit to cancel a trial decision in which a request for trial for cancellation of trademark registration was unsuccessful, it was confirmed that "QR Code" or "QR Code" had not lost their distinctiveness.
〈Case where measures to change common name were insufficient and the timing of starting the initiative was determined〉
``We attempted to eliminate the use of names similar to ``Seiro'' by implementing so-called trademark management, but the target was mainly limited to businesses in the Osaka area.The method was not thorough enough to change the long-established perceptions of general consumers across the country as described above.The defendant's assertions about strong trademark management and advertising at enormous expense belong to matters that occurred after the trademark in question was registered. ”
*Excerpt from Tokyo High Court No. 35 of 32
"Measures to prevent such common names have been taken relatively frequently since around 1998, but for about 30 years from 1965 to around 1998, they were almost never used. I have to say that it was not adopted.As a result, from around 2, measures to prevent common names were frequently taken, and as mentioned in (XNUMX) above, in response to requests from the Japan Kyoho Association or the plaintiffs, some books, etc. Even if it is stated that " is a trademark,"The word "Kyoho", which has been widely used as a name for a variety of grapes for about 30 years, cannot be recognized as having been recognized as a trademark by consumers at this time."
*Excerpt from Osaka District Court No. 9153 of 2001 (Wa) Requesting Injunction for Trademark Infringement
Measures to prevent common naming
The more famous it becomes, the more likely it is to lose its distinctiveness and become a common name. On the other hand, the more famous the trademark, the higher the property value of the trademark, and the greater the loss if it is recognized as a common name. Below, we will introduce effective measures to prevent common naming.
Description that it is a registered trademark
Attach an indication to show third parties that the trademark being used is a registered trademark.
Example)
- Write "'△△' is a registered trademark of 〇〇 Co., Ltd.".
・Add (R) mark
Indicate a generic name that is different from the registered trademark
By including a generic name in addition to the trademark for goods or services, it is possible to recognize and emphasize that the trademark is not a generic name but a trademark with exclusive rights.
Example)
・Ajinomoto Co., Inc. lists the product's general name ``Umami Seasoning'' in addition to the registered trademark ``Ajinomoto'' on its website.
・NTT East has listed the product's general name ``Caller ID Notification Service'' in addition to the registered trademark ``Number Display'' on its website.
Monitoring use and enforcement of rights by licensees and unauthorized third parties
When licensing a registered trademark, it is necessary to carefully monitor whether the licensee is using the trademark in a common name. Additionally, if an unauthorized third party is committing fraud, it may be necessary to send a warning letter and, in some cases, file a lawsuit. Furthermore, if a similar trademark is applied for and registered, it may be possible to file an opposition or request an invalidation trial.
Example)
Starbucks Corporation owns multiple trademarks related to the drink trademark ``Frappuccino.'' When another company's trademark ``Otome Frappuccino'' was registered, we filed an opposition and won a decision to cancel it. (Objection 2015-900398)
Media measures
It is thought that exposure to common names in the media, including dictionaries, will promote the use of common names. Therefore, if a name is treated as a common name by the media, it is necessary to take measures such as requesting a correction. However, legal action cannot be taken against acts such as publication in dictionaries, and only requests are made.
*Europe has a system for requesting trademark display in dictionaries, etc., and it is being used effectively.
Example)
Ajinomoto Co., Ltd. has requested that cooking programs on TV stations use the generic name ``Umami Seasoning'' instead of using the trademark ``Ajinomoto.''
Choose a name that is difficult to convert into a common name
Trademarks with weak distinctiveness, such as those that express the characteristics of a product, are generally easy to convert into names. Therefore, one way to prevent the trademark from becoming a common name is to adopt a trademark with strong neologism elements from the beginning.