Trademark Distinctiveness
in a Global Context
Sachiko Shudo, PhD
Research Center for Advanced
Science and Technology, U of Tokyo
shudo@ip.rcast.u-tokyo.ac.jp
1
Does “global business community”
imply “global linguistic community”?
Not for language per se (at least for the
foreseeable future).
But symbols can easily and very quickly cross
international borders. Trademarks are symbols.
Scientific terms tend to function universally. This
is a consideration for the presence of global
linguistic commons. (e.g. generic names for drugs)
2
The effect of the Internet on
trademarks
The Internet advantages trademarks
appearing on English language websites.
The Internet forces us back to letter culture
from oral culture.
The Internet advantages trademarks with
roman characters.
3
Examples from Japan of problems that
grow as trademarks globalize
As more trademarks are registered globally, the
chances for conflict increases.
Disputes with naïve infringers in “foreign”
countries.
Trademark originated in country A and
transliterated into the language of country B by an
infringer.
Generic term in country A is a trademark in
country B.
4
Collisions as trademarks go
international
“It’s already taken!”
AnGes MG (a leading university start-up in
Japan) used to be called Medgene.
There already existed a service mark named
MedGeneSM (Harvard’s medical database)
and a company called MedGen in the U.S.
Medgene changed its name in 2002.
5
A naïve infringer in a “foreign”
country
“What?! … What trademark?”
Chanel filed an unfair competition suit against a
small bar in Matsudo, Japan, named “SUNAKKU
SHANERU (in katakana (not romanized))” in 1994.
The Chiba District Court held that the name of the
bar is confusing, ordered the bar to cease the usage
and awarded the plaintiff damages. After the
Tokyo High Court overturned the decision, the
Supreme Court remanded.
6
スナック シャネル
7
A naïve infringer in a “foreign”
country (cont’d)
Many Japanese commercial establishments
carry names that are transliterated versions
of famous foreign brand names.
The Chanel Case has been kept relatively
low profile on the media, but raises concern
about legal strategy.
8
A not-so-naïve infringer in a
‘foreign’ country.
Nina Ricci (the owner of L’air du Temps®)
challenged a Japanese shoe maker’s
trademark (REERU DU TAN in katakana (not
romanized)).
The JPO denied the opposition.
The Tokyo High Court upheld JPO’s
decision.
The Supreme Court reversed in 2000.
9
レールデュタン®
10
Generic term in country A
trademarked in country B
Succulent dark grapes were developed by a
Japanese scientist in the 1940s. The grapes
become widely popular under the name “KYOHO”
and the scientist’s agricultural cooperative
managed to register this name as a Japanese
trademark in 1955.
The cooperative obtained a US trademark in 1985,
but because its US sales efforts failed, the
registration died in 1992.
In 1997, a California agricultural supply company
dealing in grapes registered this same name with
the US PTO.
11
Generic term in country A
trademarked in country B
(cont’d)
A Japanese box maker with an exclusive license to
the Japanese trademark sued another maker of
fruit boxes for using the mark.
In 2002, the Osaka District Court held that the
term is a generic noun referring to a type of grapes
and therefore the scope does not extend to the
defendant’s usage. The Osaka High Court upheld
this decision in May 2003.
12
Generic term in country A
trademarked in country B
(cont’d)
Are foreign-origin words in danger of becoming
privatized? If so, doesn’t this disadvantage
exporters from the original countries (where the
words are generic)?
Conversely, do holders of marks on such foreign
words face the danger of genericide (after long
legal battles)?
Maybe trademark offices dealing with foreign
origin marks should investigate/monitor the use
of the foreign terms in their countries of origin.
13
The scope of distinctiveness
local
discourse
regional
national
universal
If it should be somewhere between national
and universal, how far can we go?
Should we check every language on earth?
14
What really matters about trademarks?
From legal perspective
Distinctiveness
Whether it should be in the common
reserve
15
What really matters about trademarks?
From Business perspective
Distinctiveness
Image Association*
Memory Retention*
*For these features, the conventional meaning of
language helps. It is an incentive for using
generic or descriptive expressions (or infringing
other marks).
16
To conclude
The distinctiveness of a mark in a country does not
guarantee global distinctiveness.
It may be a trademark in another country in which
a future conflict may occur.
The naïve ethnocentric justification does not work.
The distinctiveness of a mark in one country does
not guarantee lack of need to be kept for the global
linguistic commons.
17
Thank you
Sachiko Shudo
shudo@ip.rcast.u-tokyo.ac.jp
18