Consent required at the time of examination, rules court
The Supreme Court of Japan has ruled that when an applicant applies to register another party's name as a trademark, it must have obtained permission from that party to use his or her name at the time the Japan Patent Office (JPO) examines the trademark (Case Gyo-hi 265 of 2003).
KK Matsu International, a Japanese company, filed an application with the JPO to register the trademark LEONARD KAMHOUT in several classes of the Nice Classification. Shortly after filing the application, KK Matsu submitted evidence to the JPO that Leonard Kamhout, an individual famous for his metal work, had consented to the use of his name by KK Matsu. Subsequently, however, Kamhout presented a written withdrawal of the consent through his lawyer and the examiner rejected the application by virtue of Article 4(1)(viii) of the Trademark Law, which provides that a trademark cannot be registered if it contains:
"the portrait of another person or the name, famous pseudonym, professional name or pen name of another person or the famous abbreviation thereof (except where the consent of the person concerned has been obtained)."
KK Matsu appealed to the Tokyo High Court, contending that:
- once the consent was submitted to the JPO, the exception in Article 4(1)(viii) was satisfied;
- a person who gives his or her consent cannot withdraw it; and
- the question of whether the exception has been satisfied should be determined at the time of filing the application.
The Tokyo High Court ruled that taking into consideration the reason why consent is required under Article 4(1)(viii), consent must exist at the time of examination, rather than at filing. KK Matsu appealed.
Upholding the decision of the Tokyo High Court, the Supreme Court held that applicants filing another person's name as a trademark must have obtained his or her permission to use the name as a mark at the time of examination.
Yukukazu Hanamizu, Yuasa and Hara, Tokyo
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