April 2014, Issue no. 19

trademark as being a logo of a corporate brand, a 4. “LADY GAGA” Trademark Application / IP High logo of a product/service brand, or a logo of a Court Decision business brand. ENARI, Fumie Takino Kawasaki & Associates The IP High Court held that the subject trademark has also acquired distinctiveness in respect of apparel [Case Number] 2013 (Gyo-Ke) 10158 products and thus is registrable for such goods. Judgment Issued on December 17, 2013 Intellectual Property High Court [Comments] (1) We consider that the present judgment is [Facts] reasonable. The plaintiff, Ate My Heart Inc., which is a company “Kawasaki” itself is well known as both a city owned and controlled by Lady Gaga, filed a and a surname in Japan. For example, divisional application for registration of “LADY “Munenori Kawasaki” of the Toronto Blue Jays GAGA” in standard characters (“the Mark”) for is now active in Major League Baseball in the “phonograph records; downloadable music files; United States. The IP High Court, however, exposed cinematographic films; pre-recorded video found that this trademark is inherently discs and video tapes” in Class 9 on March 28, 2011 distinctive because it is stylized as shown based on the parent trademark application in above. It appears that the results of the two Classes 3, 9, 14, 16, 18, 25, and 41 filed on April 12, market surveys contributed greatly to this 2010. The plaintiff received a final decision of finding. rejection mailed on October 4, 2011 from the Japan (2) In this particular case, the IP High Court showed Patent Office (JPO). a new interpretation of Article 3, Para. 2 of the The plaintiff filed an appeal against the Japan Trademark Law (as mentioned in the aforementioned final decision of rejection on above Issue (2) (i)). December 27, 2011, but the appeal board rendered That is, the applicant is a heavy industry an appeal decision dated February 7, 2013 (mailing company and, accordingly, the designated goods date) concluding that the original decision of of the subject trademark, namely apparel rejection should be maintained; the plaintiff then products, are not the main products of the brought an action before the IP High Court on June applicant. 6, 2013, requesting that the Court should rescind the Thus, the applicant could prove that this JPO’s appeal decision. trademark had been well known for the applicant’s main products, whereas the applicant [Issues] could not prove that the trademark had been (1) Whether the Mark is unregistrable under Article well known for apparel products. However, the 3(1)(iii) because the Mark directly indicates the applicant could successfully prove that the content of “phonograph records; downloadable trademark had been distinctive for apparel music files; pre-recorded video discs and video products. tapes” (“the subject goods”). The IP High Court, showing the new (2) Whether the Mark is unregistrable under Article interpretation as mentioned in the above Issue 4(1)(xvi) because the Mark would be likely to (2) (i) and considering and gauging the strength mislead as to the quality or content of the goods of the distinctiveness of the subject trademark as if used on goods which have nothing to do with a house (corporate) mark for their main products Lady Gaga. based on the evidence presented, determined that this trademark is also distinctive in respect [Court Decision] of the apparel products and thus regsitrable The court affirmed the appeal decision, holding as under this Article. It appears that, here too, the follows: results of the two market surveys contributed (1) Considering that Lady Gaga is a globally well- greatly to this finding. known American female musician, if the Mark is

5 used on or in connection with the subject goods, goods even if the Mark is completely the same as it is easily recognized that the Mark merely the name of a globally well-known musician, (e) the indicates the singer or performing artist of the rejection of the application for the Mark would cause subject goods, such that the Mark directly the musician’s reputation to be ruined and would describes the quality or content of the subject cause confusion if a third party could freely use the April 2014, Issue no. 19 goods and cannot be distinctive, and therefore, Mark on the subject goods, and (f) the registration the Mark cannot be registered under Article 3(1) of the Mark would not cause any problems, as can

(iii). be seen in prior trademark registrations for “MICK (2) If the Mark indicating the content of the subject JAGGER” (Reg. No. 4408433), “BRITNERY SPEARS” goods is used on or in connection with goods (Reg. No. 4548392), “ALICIA KEYS” (Reg. No. which have nothing to do with Lady Gaga, the 4859462), “BEYONCE’”(Reg. No. 4955673), “BILLY Mark would be likely to mislead as to the quality JOEL” (Reg. No. 5071743), etc. The court also or content of the goods, and therefore, the Mark dismissed all of these allegations by holding that, cannot be registered under Article 4(1)(xvi). with respect to (d), the issue of trademarks for singers or performing artists falls into the category The plaintiff alleged that the appeal decision was of the quality or nature (content) of the goods, invalid, and should be overturned by reason that the holding that, with respect to (e), as mentioned appeal board (a) made an inappropriate judgment above, the Mark cannot be an indication of source about the distinctiveness of the Mark, referring to because it is easily recognized that the Mark merely only a specific manner of displaying the Mark on indicates a globally well-known musician’s name, record jackets, etc., (b) improperly adopted a view and, holding that, with respect to (f), if the Mark that trademark applications for the names of were to be used on goods which have nothing to do musicians or bands should be rejected, failing to with Lady Gaga, it would be likely to mislead as to recognize that a third party would be able to keep the quality or nature of the goods. using such professional names in a common manner on the subject goods under Article 26(1) even after The plaintiff further alleged that the appeal board such trademarks are registered, and (c) made a ignored the fact that the names of musicians and misjudgment on distinctiveness, completely ignoring bands such as Lady Gaga actually function as the possibility that the Mark could be an indication indications of source, but the court also dismissed of source, for example, in the case where the the allegation, concluding that, because the general plaintiff’s company changed its name to a new public usually chooses the subject goods based on company name containing the Mark, such as “LADY the names of musicians or bands, the general public GAGA, Inc.” However, the court dismissed all of recognizes the said names as the quality or nature these arguments by holding that (a) the appeal (content) of the goods, and the general public would board’s judgment was properly made by referring to not recognize the Mark as an indication of source, a general manner of displaying the Mark on record especially when the name of the musician or band is jackets, etc., (b) Article 26(1), which provides the famous. “limitations of effects of trademark rights”, is not intended to alleviate the registration requirements of [Comments] Article 3(1)(iii) and Article 4(1)(xvi), and (c) the This is a first court decision in Japan as to a mark Mark cannot be an indication of source inasmuch as comprising the name of a musician or band for the LADY GAGA is a globally well-known American subject goods. musician, because the general public would easily Regarding a trademark application for a mark recognize that the Mark merely indicates the singer comprising the name of a musician or band or performing artist of the subject goods, and this designating the subject goods, there is no written situation would not change, whomever the applicant unified rule in the trademark examination guidelines may be. of the JPO, but we have seen many cases so far The plaintiff also alleged that (d) the Mark does not where the applications for such marks are rejected directly describe the quality or nature of the subject at the examination or appeal stages at the JPO by

6 April 2014, Issue no. 19

reason that such marks merely indicate the quality 5. YAMANASHI becomes the first Geographical or nature (content) of the goods, such that they lack Indication (GI) for wine in Japan distinctiveness under current JPO practices, especially when such marks are the names of famous Murai, Koji musicians or bands. Shinjyu Global IP Under the circumstances, since many trademark practitioners think that the current JPO practice is (1) YAMANASHI is now classified as a GI for wine not reasonable, considering that there is sufficient On July 16, 2013, when the Director General of the possibility that such marks can function as Japan National Tax Agency announced that indications of source and that there is a need to “YAMANASHI” would become a Japanese protect the goodwill and established renown of such geographical indication (GI) for wine, it became the marks from unauthorized use, the Trademark first GI designated for wine. Besides YAMANASHI, Committee of the Japan Patent Attorneys four kinds of shochu (a clear alcohol that is distilled Association submitted a Petition to the JPO in order from sweet potatoes, rice, buckwheat, and so on.) to request the review and improvement of such and one kind of sake have also been designated as current practices in 2012. GIs. Since the submission of the Petition in 2012, no improvement of current JPO practice has been seen Alcohol Production GIs Designation in this matter, and, in the interim, the IP High Court type center (district) Iki-shi, Nagasaki has confirmed that the JPO current practice is valid IKI June, 1995 Prefecture in the court decision in this case. Kuma-gun, The plaintiff filed an appeal to the Supreme Court. Kumamoto Prefecture The decision of the Supreme Court will be carefully KUMA June, 1995 Hitoyoshi-shi, watched by many practitioners. Kumamoto Shochu Prefecture Okinawa RYUKYU June, 1995 Prefecture Kagoshima Prefecture, December, SATSUMA excluding 2005 Amami-shi and Oshima-gun Hakusan-shi, December, Sake HAKUSAN Ishikawa 2005 Prefecture

Ahead of the Tax Agency’s designation, the Yamanashi Wine Manufacturers’ Association approved 55 brands as Yamanashi wine according to the said criteria. The approved wines are entitled to bear the label “Made in Yamanashi”, instead of “Made in Japan” when they are exported. The Association hopes that this approval will boost the name recognition of Yamanashi wine not only in Japan but also around the world.

(2) Effect of GI recognition YAMANASHI, regardless of whether it is written in Japanese or a foreign language, can be used only for the following types of wine:

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