Securing trademark protection is fundamental to building and defending a brand in any market. In Japan, however, companies face a unique and sometimes complex hurdle when their desired trademark incorporates a personal name, surname, or even a well-known pseudonym. Article 4, Paragraph 1, Item 8 of the Japanese Trademark Act restricts the registration of marks containing "another person's name" without their consent. Historically, the interpretation and application of this rule created significant challenges, particularly for brands derived from founder or designer names.

However, a significant Intellectual Property (IP) High Court decision in 2021, coupled with a subsequent legislative amendment effective April 1, 2024, has brought important clarifications and shifted the landscape. Understanding this evolution is crucial for U.S. businesses seeking to register and protect their name-based brands in Japan.

The Core Issue: Article 4(1)(8) and Personality Rights

Article 4(1)(8) of the Japanese Trademark Act states that a trademark registration cannot be granted for a mark containing the portrait, name, well-known pseudonym, professional name, or pen name of another person, or their well-known abbreviation, without obtaining the consent of that person.

The primary rationale behind this provision is the protection of personality rights (jinkakuteki rieki). Japanese law recognizes that individuals have an interest in controlling the commercial use of their identity, including their name and likeness. Allowing unrelated third parties to freely trademark someone else's name could potentially mislead consumers about affiliations, dilute the value associated with the name, or simply cause personal offense to the individual whose name is used.

While the principle seems straightforward, its application historically raised several questions:

• Who qualifies as "another person"?
• What if multiple people share the same name? Does the applicant need consent from everyone?
• What if the name is widely recognized as a brand, distinct from any living individual?
• Does the fame or stylization of the mark matter?

The Former Strict Approach and Its Challenges

For a period leading up to the early 2020s, the Japan Patent Office (JPO) and, in some instances, the courts adopted a particularly strict interpretation of Article 4(1)(8). Often, if a trademark application contained a name (even a stylized one or one combined with other elements) that matched the name of any existing person found through searches (like online phone directories), registration could be refused unless the applicant obtained consent from all such individuals.

This approach proved highly problematic, especially for:

• Fashion Brands: Many fashion houses are built around the name of their founder or designer. Obtaining consent from every person nationwide sharing that name is often practically impossible. Several high-profile cases involving designer names faced registration hurdles under this strict interpretation.
• Established Brands with Personal Name Origins: Even well-known brands originally derived from a personal name could face difficulties if other individuals shared that name. The fame of the brand was often not considered a decisive factor in overcoming the objection based on the name itself.

This created significant uncertainty and frustration for businesses investing heavily in building brand identity around names. It seemed to prioritize the potential (and sometimes abstract) personality rights of unrelated individuals over the established commercial rights and goodwill associated with a brand name recognized by consumers.

A Shift in Perspective: The 2021 IP High Court Sound Mark Ruling

A turning point came with a decision by Japan's IP High Court on August 30, 2021. The case involved a well-known Japanese drugstore chain that sought to register its famous advertising jingle – a short melody incorporating the company's brand name, which was derived from its founder's name – as a sound trademark.

The JPO had refused the application, applying the strict interpretation of Article 4(1)(8). It reasoned that because other individuals existed who shared the founder's name, the sound mark contained "another person's name," and consent from all those individuals was lacking.

The IP High Court overturned the JPO's refusal. The court's reasoning marked a significant shift towards a more contextual and pragmatic analysis:

1. Balancing Interests: While reaffirming the purpose of Article 4(1)(8) to protect personality rights, the court emphasized that the provision must be interpreted in a way that balances these rights against the applicant's legitimate interest in registering its established brand identity. It shouldn't automatically prioritize potential personality rights in every instance.
2. The Crucial Test: Consumer Perception: The court held that the key question is how the mark is actually perceived by the relevant consumers in light of actual trade practices. Even if individuals with the same name exist, if the public encountering the mark (in this case, the sound jingle) would not normally associate it with a specific person's name but rather with the applicant's business or brand, then the mark should not be considered as containing "another person's name" for the purposes of Article 4(1)(8).
3. Fame and Acquired Distinctiveness Matter: The court placed significant weight on the fact that the name incorporated in the sound mark was nationally famous and overwhelmingly recognized by consumers as indicating the drugstore chain itself, due to extensive advertising and use. The sound jingle functioned as a source identifier for the company's services.
4. Conclusion: Therefore, despite the existence of other individuals sharing the name, the sound mark, in the context of its use and recognition, was primarily perceived as indicating the brand, not "another person." The acquired distinctiveness and fame of the brand name effectively overrode the potential conflict with the personal names of others.

This decision was seen as a welcome "swing back" from the rigidity of some previous interpretations. It suggested that the fame and acquired meaning of a brand name could, in certain circumstances, overcome an Article 4(1)(8) objection based merely on the existence of homonymous individuals. It highlighted the importance of how consumers actually perceive the mark in the marketplace.

Legislative Reform: The April 2024 Amendment to Article 4(1)(8)

The practical difficulties highlighted by the earlier strict interpretations and the direction indicated by the 2021 IP High Court ruling led to legislative reform. Amendments to the Trademark Act, effective April 1, 2024, significantly revised the application of Article 4(1)(8) concerning personal names.

The new Article 4(1)(8) now requires the consent of "another person" only when the following conditions are met regarding their name (specifically a natural person's full name):

1. Well-Known Status: The person's name included in the trademark must be well-known (cho mei) among consumers in the field related to the goods or services for which the trademark is being applied. AND
2. Applicant's Lack of Justification (per Cabinet Order): The trademark application must fall foul of specific requirements laid out in a Cabinet Order, generally targeting applications made in bad faith or without a legitimate connection to the name. The revised Cabinet Order (Article 1) specifies that registration is barred (without consent of the well-known person) if the applicant:
   • Has an unfair purpose (e.g., illicitly benefiting from the fame or reputation of the person's name, causing damage to them); OR
   • Lacks a reasonable relationship with the person whose name is included (e.g., the name is not the applicant's own name, nor that of their executive, nor derived from a predecessor's name, etc.) and the trademark is identical or confusingly similar to the person's name.

Key Changes Introduced by the 2024 Amendment:

• Fame Threshold: The biggest change is the introduction of a "well-known" threshold for the "another person's name." If the name included in the mark belongs to someone who is not well-known in the relevant consumer segment for those goods/services, their consent is no longer required, regardless of whether the applicant has any connection to the name or any particular purpose. This dramatically lowers the bar for registering trademarks containing less famous or common personal names.
• Applicant's Justification: Even if the name is well-known, registration might still be possible without consent if the applicant can demonstrate a legitimate connection to the name (e.g., it's their own name) and the absence of an unfair purpose.
• Focus on Likely Harm: The reform aims to focus the restriction on situations where there is a higher likelihood of actual harm to the personality rights of a well-known individual or where the applicant is clearly trying to unfairly free-ride on someone else's reputation.
• Continued Protection for Portraits and Corporate Names: Importantly, the "well-known" threshold applies only to personal names (full names). Trademarks containing another person's portrait or another entity's corporate name still require consent regardless of fame under the revised Article 4(1)(8). Well-known abbreviations of personal or corporate names also continue to require consent.

This amendment represents a significant liberalization compared to the previous strict JPO practice and aligns Japanese law more closely with the principle that trademark law primarily protects source identification, while personality rights are protected where a genuine risk of confusion or exploitation exists. It effectively codifies and expands upon the contextual approach hinted at in the 2021 IP High Court ruling.

Practical Strategies for U.S. Businesses

In light of the 2021 court decision and the crucial 2024 legal amendments, U.S. businesses seeking trademark protection in Japan for brands involving personal names should consider the following strategies:

1. Thorough Trademark Clearance: Searches remain essential. Beyond checking for identical or similar registered marks, searches should still investigate whether the name component corresponds to any well-known individuals in the relevant sector in Japan. While the need for consent from all homonymous individuals is largely gone (for applications post-April 1, 2024), identifying potential conflicts with famous individuals is now the key focus under Article 4(1)(8).
2. Assess Name Fame: If the mark contains a personal name, objectively assess whether that name belongs to an individual who is "well-known" among Japanese consumers for the specific goods or services covered by the application. If the name is not well-known in that context, an Article 4(1)(8) refusal is unlikely under the new law.
3. Evaluate Applicant's Connection and Intent: If the name is well-known, the applicant's relationship to the name and their purpose become critical. Can a legitimate connection be demonstrated (e.g., applicant's own name, company founder's name used historically)? Is there any indication of unfair purpose (e.g., trying to capitalize on a celebrity's fame without permission)? Documenting this connection or lack of unfair intent can be important.
4. Build and Document Brand Recognition: While the legal threshold has changed, demonstrating that the name, as used in the trademark, functions primarily as a brand identifier rather than a reference to a person remains highly relevant, echoing the 2021 court decision's logic. Evidence of use, advertising expenditure, consumer surveys, and market share in Japan can help establish acquired distinctiveness or secondary meaning, strengthening the argument that consumers perceive the mark as a brand, not just a name, and potentially countering claims of "unfair purpose."
5. Obtain Consent When Necessary/Possible: If the mark clearly refers to a specific, well-known living individual, and the applicant lacks a clear legitimate connection, obtaining written consent remains the most straightforward way to overcome Article 4(1)(8). This is especially true if the individual's fame is closely tied to the goods/services in question.
6. Consider Mark Design: If using a personal name that might be deemed well-known, incorporating distinctive logos, stylization, or other elements can help differentiate the mark and strengthen the argument that it functions as a unique brand identifier, potentially mitigating risks related to perceptions of unfair purpose.
7. Non-Traditional Marks (e.g., Sound): The principles apply equally. The key is consumer perception – does the sound primarily identify the brand, or is it likely to be perceived by consumers as the name of a well-known person in that field without justification? The 2021 case confirms that brand recognition can be crucial for sound marks.
8. Filing Date Matters: Remember the amended Article 4(1)(8) applies to applications filed on or after April 1, 2024. Applications filed before this date are still subject to the previous, potentially stricter interpretation requiring consent from all existing individuals with the same name.

Conclusion: A More Pragmatic Path for Name-Based Trademarks

The journey of interpreting Article 4(1)(8) of Japan's Trademark Act has seen a shift from a period of challenging strictness to a more pragmatic approach, influenced by judicial reasoning and culminating in legislative reform. The 2021 IP High Court decision involving a famous sound mark emphasized the importance of consumer perception and acquired brand distinctiveness. The subsequent April 2024 amendment codified a significant relaxation, focusing the requirement for consent on situations involving names that are genuinely well-known in the relevant field and where the applicant lacks a legitimate justification.

For U.S. businesses, this means that while registering trademarks containing personal names in Japan still requires careful consideration and clearance, the hurdles are now significantly lower for marks using less famous names. For marks incorporating well-known names, demonstrating a legitimate connection and building strong brand recognition remain key strategies. This evolution reflects a better balance between protecting individual personality rights and enabling businesses to secure trademark rights for the brands they have built, often around personal names that have gained distinctiveness through commercial use.