table of contents
Amendment to Article 4, Paragraph 1, Item 8 of the Trademark Act
~ Relaxation of registration requirements for trademarks that include another person's name ~
Article 2024, Paragraph 4, Item 1 of the Trademark Law is scheduled to be revised in 8. Due to this revision, the registration requirements for trademarks that include another person's name are scheduled to be relaxed, so we would like to inform you of the background and details of the revision as follows.
*Based on information as of December 2023, 12 (particularly the draft review criteria revision released on December 15). Please note that actual operations may differ.
1. Current system and its challenges
(1) Current regulations
Pillar of Article 4, Paragraph 1
Notwithstanding the provisions of the preceding article, the following trademarks may not be registered as trademarks:
8. Trademarks that include portraits of others, names of other people, famous pseudonyms, stage names, pseudonyms, or famous abbreviations of these (excluding those with the consent of other people)
Notwithstanding the provisions of the preceding article, the following trademarks may not be registered as trademarks:
8. Trademarks that include portraits of others, names of other people, famous pseudonyms, stage names, pseudonyms, or famous abbreviations of these (excluding those with the consent of other people)
(2) Necessity of revision
The system has been operated too rigidly with an emphasis on protecting personal interests, and some have raised concerns about it.
① There are requests for the requirements of this regulation to be relaxed, especially in the fashion industry, where the names of founders, designers, etc. are often used in brand names.
②Many of the fashion brands that often have trademarks that include names are developed by small and medium-sized enterprises → Brand protection perspective for such small and medium-sized enterprises and start-up companies
③ In foreign countries such as the United States, Europe, China, and South Korea, there are systems in place that require the familiarity of another person's name in order to register a trademark that includes the other person's name → From the perspective of international harmonization of systems
②Many of the fashion brands that often have trademarks that include names are developed by small and medium-sized enterprises → Brand protection perspective for such small and medium-sized enterprises and start-up companies
③ In foreign countries such as the United States, Europe, China, and South Korea, there are systems in place that require the familiarity of another person's name in order to register a trademark that includes the other person's name → From the perspective of international harmonization of systems
(3) Guidelines for revision
① The purpose of this provision, which is "protection of personal interests," is summarized as "the right not to suffer any harm or disadvantage due to the association of one's name with the designated goods/services related to the application."
②The higher the popularity of the "other person", the higher the above harm or disadvantage → "other person" can be limited to those who are well known to a certain degree
③ When dealing with a fraudulent application using the name of another person who is not well-known, consider the circumstances of the applicant (whether there is a legitimate reason).
②The higher the popularity of the "other person", the higher the above harm or disadvantage → "other person" can be limited to those who are well known to a certain degree
③ When dealing with a fraudulent application using the name of another person who is not well-known, consider the circumstances of the applicant (whether there is a legitimate reason).
2. revised law
(viii) Portrait of another person or name of another person (limited to names that are widely recognized among consumers in the field of goods or services for which the trademark is used) or name or famous pseudonym, stage name or pseudonym, or any famous name thereof; Trademarks including abbreviations (excluding those with the consent of other persons)OrTrademarks that include another person's name and do not meet the requirements specified by Cabinet Order
・Trademark Law Enforcement Order
Article 1 The requirements stipulated by the Cabinet Order in Article 4, Paragraph 1, Item 8 of the Commercial Code are as follows:In any caseApplicable.
(1) There is a considerable relationship between the name of another person included in the trademark and the applicant for trademark registration.
(ii) The trademark registration applicant does not seek to obtain trademark registration for fraudulent purposes.
Article 1 The requirements stipulated by the Cabinet Order in Article 4, Paragraph 1, Item 8 of the Commercial Code are as follows:In any caseApplicable.
(1) There is a considerable relationship between the name of another person included in the trademark and the applicant for trademark registration.
(ii) The trademark registration applicant does not seek to obtain trademark registration for fraudulent purposes.
(1) Outline of the revised law
①Separate Article 4, Paragraph 1, Item 8 into cases where "consent of another person" is required and cases where it is not necessary.
(2) Regarding the part before "or," among the previous provisions, only the "name of another person" required a certain degree of popularity.
③ Regarding the second part of "or," the circumstances on the applicant's side are to be specified by Cabinet Order in order to deal with fraudulent applications.
(2) Regarding the part before "or," among the previous provisions, only the "name of another person" required a certain degree of popularity.
③ Regarding the second part of "or," the circumstances on the applicant's side are to be specified by Cabinet Order in order to deal with fraudulent applications.
(2) Requirements specified by Cabinet Order
① The "considerable relationship" in item 1 is assumed to include the applicant's own name, the name of the founder or representative, the name of a store that has been used continuously since before the application was filed, etc.
② The ``fraudulent purpose'' in item 2 is assumed to be the purpose of harassing others or having them buy the trademark in advance.
② The ``fraudulent purpose'' in item 2 is assumed to be the purpose of harassing others or having them buy the trademark in advance.