The "Tsuki no Tomo" Case: Navigating Others' Names and Abbreviations in Japanese Trademarks

Japanese Attorney at Law - Bengoshi L.L.

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The "Tsuki no Tomo" Case: Navigating Others' Names and Abbreviations in Japanese Trademarks

Judgment Date: November 12, 1982
Court: Supreme Court of Japan, Second Petty Bench
Case Number: Showa 57 (Gyo-Tsu) No. 15 (Action for Rescission of a Trial Decision)

The "Tsuki no Tomo" (literally "Moon's Friend") case is a landmark Japanese Supreme Court decision that significantly clarified the interpretation of Article 4, Paragraph 1, Item 8 of the Japanese Trademark Law. This provision restricts the registration of trademarks containing another person's name or a famous abbreviation thereof without their consent. The Court's ruling in this case drew a crucial distinction between a company's full trade name and the part of its name remaining after removing identifiers like "Kabushiki Kaisha" (Co., Ltd.), deeming the latter an "abbreviation" that requires "fame" to block a trademark registration.

Background of the Dispute: A Tale of Two "Tsuki no Tomo no Kai"

The appellee, Company Y (Kabushiki Kaisha K), had applied for the trademark "月の友の会" (Tsuki no Tomo no Kai) on July 12, 1963. The designated goods were in Class 17, covering "clothing, textile personal items, and bedding". This trademark was successfully registered on January 19, 1965.

The appellant, Company X (Kabushiki Kaisha T), whose full trade name was "株式会社月の友の会" (Kabushiki Kaisha Tsuki no Tomo no Kai), filed a request for an invalidation trial against Company Y's trademark on November 11, 1965. However, the Japan Patent Office (JPO) ultimately dismissed Company X's invalidation request in a trial decision dated November 7, 1978.

Company X then initiated a lawsuit to cancel the JPO's decision. Its arguments were multifaceted:

  • The essential part of its own trade name was "月の友の会".
  • Company Y's trademark "月の友の会" fell under Article 4, Paragraph 1, Item 8 of the Trademark Law, which prohibits (with exceptions) the registration of trademarks containing "the portrait, name, famous pseudonym, famous stage name, or famous pen name of another person, or a famous abbreviation of any of these (except with the consent of the other person)." Company X argued its name was included, or at least, "月の友の会" was its famous abbreviation.
  • The trademark was likely to cause confusion with Company X's business operations, violating Article 4(1)(xv).
  • The trademark was likely to cause misidentification regarding the quality of goods, violating Article 4(1)(xvi).
  • The registration was contrary to the spirit of the Trademark Law and therefore should be invalidated.

The Tokyo High Court, which heard the case before the Supreme Court appeal, rejected Company X's claims. The High Court found that Company X's full legal name was indeed "株式会社月の友の会". Crucially, it determined there was insufficient evidence to conclude that the shortened form, "月の友の会," was nationally famous as an abbreviation for Company X. The High Court also noted evidence suggesting that various "Tsuki no Tomo no Kai" groups had been established by retailers across Japan at the initiative of Company Y, and that a "Fukui Prefecture Tsuki no Tomo no Kai" had existed even before Company X was established.

Dissatisfied, Company X appealed to the Supreme Court, primarily arguing that:

  1. The trademark "月の友の会" was effectively identical to the core part of its trade name.
  2. For an abbreviation to be protected under Article 4(1)(viii), fame in just one region should suffice, rather than requiring national fame.

The Supreme Court's Decisive Interpretation

The Supreme Court dismissed Company X's appeal, upholding the High Court's decision. The core of the Supreme Court's judgment lay in its precise interpretation of "another person's name" and "abbreviation" within the context of Article 4(1)(viii) for joint-stock companies (Kabushiki Kaisha):

  • Full Trade Name as "Another Person's Name": The Court affirmed that the full, official trade name of a Kabushiki Kaisha (e.g., "株式会社XYZ") does indeed qualify as "another person's name" (他人の名称) under Article 4(1)(viii).
  • Name Minus "Kabushiki Kaisha" as an "Abbreviation": This was the pivotal point. The Court ruled that the portion of a Kabushiki Kaisha's trade name that remains after removing the words "Kabushiki Kaisha" (e.g., "XYZ" from "株式会社XYZ") should be considered an "abbreviation of another person's name" (他人の名称の略称) for the purposes of this provision.
  • "Fame" Requirement for Abbreviations: Consequently, if a proposed trademark includes such an abbreviation (the company name stripped of its "Kabushiki Kaisha" identifier), it can only be refused registration under Article 4(1)(viii) if that abbreviation is "famous" (著名) as indicating the other person (i.e., the specific Kabushiki Kaisha).
  • Application to the Case: In this instance, Company Y's registered trademark "月の友の会" was identical to the portion of Company X's full trade name ("株式会社月の友の会") remaining after the words "株式会社" were removed. This made "月の友の会" a trademark consisting of an abbreviation of Company X's name. Therefore, Company Y's trademark could only be denied registration if "月の友の会" was proven to be famous as specifically indicating Company X.

The Supreme Court found that the High Court's earlier judgment, which had concluded that "月の友の会" was not proven to be famous as designating Company X, was legally sound and justifiable. The Court also distinguished a precedent from the Daishin-in (the pre-WWII highest court) cited by the appellant. It noted that the Daishin-in case was decided under the old Trademark Law (Law No. 99 of 1921), which simply stated that "a trademark bearing another person's trade name" could not be registered and did not have specific provisions differentiating or requiring fame for abbreviations of trade names as the current law does.

Understanding the "Why": The Purpose of Article 4(1)(viii)

The commentary accompanying this case highlights that Article 4(1)(viii) is primarily understood as a provision for the protection of personality rights (人格権) rather than merely a tool to prevent consumer confusion regarding the source of goods or services. Several factors support this interpretation:

  • The provision explicitly allows registration if "the other person's consent" is obtained. If the main goal were to prevent public confusion, individual consent might not be a sufficient safeguard.
  • The prevention of source confusion is more directly addressed by other provisions, such as Article 4(1)(xv) (likely to cause confusion with another person's business).
  • Article 47 of the Trademark Law imposes a five-year statute of limitations (period of repose) for requesting invalidation trials based on certain "private interest" grounds, and Article 4(1)(viii) is included among these. This suggests its focus is on protecting individual rights rather than broader public order concerns that might warrant indefinite challenge.

Unpacking "Name" vs. "Abbreviation" – The Court's Clarification

The "Tsuki no Tomo" decision was particularly significant for drawing a clear line, at least for Kabushiki Kaisha, between what constitutes a "name" and what is an "abbreviation" under Article 4(1)(viii).

  • "Name" (氏名 - shimei) in the context of a natural person refers to their full name. "Name/designation" (名称 - meishō) applies to corporations and other entities.
  • Japanese company law (e.g., Article 6, Paragraph 2 of the Companies Act) mandates that corporate names include terms like "Kabushiki Kaisha," "Gomei Kaisha," etc., to indicate the type of company. A key legal question was whether removing this legally required suffix still left the "name" or if it created an "abbreviation."
  • Prior to this Supreme Court ruling, lower court decisions had been divided:
    • In the SEVEN UP case (Tokyo High Court, June 1, 1977), the court found that "SEVEN UP" was an abbreviation of "The Seven-Up Company" and not its "name" for the purpose of Article 4(1)(viii).
    • Conversely, in a case involving the Nihon Biyo Igaku Kenkyukai (Japan Aesthetic Medicine Research Society) (Tokyo High Court, December 22, 1977), the court held that "Nihon Biyo Igaku Kenkyukai" was the name of the foundation, even without "Zaidan Hojin" (incorporated foundation). The reasoning was that "Zaidan Hojin" was merely a legally required descriptor, and the core identifying part of the entity was the remaining portion.
  • The "Tsuki no Tomo" Supreme Court decision decisively clarified that, for a Kabushiki Kaisha, its trade name without the "Kabushiki Kaisha" identifier is to be treated as an abbreviation. This interpretation aligns with a faithful reading of the then-applicable Commercial Code (Article 17), which required the inclusion of the company type in the formal trade name. This approach has been praised for its clarity and for providing a predictable standard.
  • However, alternative views exist. Some scholars argue that the core, identifying part of a trade name (e.g., "Tsuki no Tomo no Kai" from "Kabushiki Kaisha Tsuki no Tomo no Kai") should also be considered the "name" itself, not just an abbreviation. There's also speculation that one aim of the Supreme Court's ruling might have been to prevent the overly easy blocking of trademark registrations simply by someone having a registered trade name that shares common words.

The "Famous" Hurdle: A Critical Consequence

The classification of the company name minus "Kabushiki Kaisha" as an "abbreviation" has a critical consequence: under Article 4(1)(viii), such an abbreviation must be "famous" as indicating the specific entity to preclude registration of a trademark containing it (unless consent is given). If the core part were considered the "name" itself, then, in principle, its mere inclusion in a trademark (without consent) could be grounds for refusal, irrespective of fame.

The Supreme Court referenced the Kanthal case (Daishin-in, June 19, 1942) to highlight the evolution of the law. The old Trademark Law (Article 2(1)(v)) simply barred trademarks "having another person's... trade name" without consent, and did not explicitly mention or qualify abbreviations with a fame requirement. In the Kanthal case, a Swedish company named "AKTIEBOLAGET KANTHAL" (where "AKTIEBOLAGET" means "Kabushiki Kaisha" in Swedish) challenged the trademark "カンタル" (Kanthal in Katakana). The Daishin-in found "KANTHAL" to be the essential part of the trade name and considered it identical to the challenged mark. The current Trademark Law, by specifically adding "famous... abbreviations," refined this area, strengthening personality rights protection but also introducing the "famous" criterion for abbreviations.

The interpretation of "name" under Article 4(1)(viii) has been explored in other contexts:

  • Foreign Company Names (Carrefour case, Tokyo High Court, July 18, 2001): For foreign companies, "another person's name" is determined by the official name under the laws of their country of incorporation. In this case, French company law did not require the company type (e.g., S.A.) to be part of the official trade name. Thus, "CARREFOUR" itself was deemed the official name of the French supermarket chain, and a trademark application for "Carrefour" (and its Katakana version) was found to contain that name. This means a foreign company's name without a corporate identifier might be treated as its full "name" (not requiring fame to block) if its home country's law defines it as such, potentially creating a different standard than for Japanese Kabushiki Kaisha.
  • Unincorporated Associations:
    • Nihon Biyo Igaku Kenkyukai ① case (Tokyo High Court, September 30, 1999): The court ruled that an unincorporated association (a dantai without legal personality but with a designated representative) can benefit from the protection of Article 4(1)(viii), overturning a JPO decision that had denied such entities standing.
    • Nihon Biyo Igaku Kenkyukai ② case (Tokyo High Court, April 26, 2001): This case addressed a crucial point of equity. If a Kabushiki Kaisha needs to prove that its abbreviation (name minus "Kabushiki Kaisha") is famous, it would be imbalanced not to require an unincorporated association (which doesn't have a legally mandated prefix like "Kabushiki Kaisha") to also demonstrate that its name is famous when asserting rights under Article 4(1)(viii). The court found that failing to consider the fame of the unincorporated association's name would put corporations at a significant disadvantage, and thus reversed a JPO decision that hadn't considered this fame aspect. (The invalidation claim in this saga was ultimately dismissed in a later decision, known as the Nihon Biyo Igaku Kenkyukai ③ case ).

Challenges and Lingering Issues

The courts, including the Supreme Court in the Kokusai Jiyu Gakuen case (July 22, 2005), consistently interpret Article 4(1)(viii) as a provision safeguarding personality rights. As such, they tend to avoid importing traditional trademark law considerations like "essential part of the mark" or "likelihood of confusion" when applying this specific article, focusing instead on whether the name or famous abbreviation is present without consent.

This approach, while principled, makes Article 4(1)(viii) somewhat of an outlier within the broader framework of trademark law, which often revolves around distinctiveness and confusion. Under this provision, a trademark can become unregistrable simply because it happens to contain another's name (or famous abbreviation) without their consent, even if there's no consumer confusion (see Suehiro Seiko Kabushiki Kaisha case, IP High Court, May 26, 2009 ).

This has led to scholarly debate, with many advocating for additional requirements, such as a certain baseline level of fame for the name itself (not just for abbreviations), or objective circumstances demonstrating that the use of the name in a trademark would genuinely cause offense or distress to the named person or entity.

The current interpretive landscape presents some complexities:

  • The treatment of foreign company names can differ from domestic ones based on the laws of the foreign company's home jurisdiction regarding the inclusion of corporate identifiers in the official name.
  • The fame requirement can apply differently to incorporated versus unincorporated entities.
  • Many businesses, aware of these nuances, proactively register trademarks corresponding to their trade names minus the "Kabushiki Kaisha" (or similar) identifier, especially if that abbreviated form is not yet "famous" enough to block others under Article 4(1)(viii). This is a defensive strategy to secure rights to their commonly used business name.

Conclusion

The "Tsuki no Tomo" Supreme Court judgment remains a cornerstone in Japanese trademark law for its clear delineation between a full corporate trade name and its abbreviation (the name minus "Kabushiki Kaisha"). By stipulating that such an abbreviation must be "famous" as indicating the specific entity to bar registration under Article 4, Paragraph 1, Item 8, the Court provided a crucial, albeit debated, framework. This decision underscores the personality rights protection embedded within trademark law and continues to influence how businesses and legal practitioners approach the registration of trademarks that intersect with existing personal or corporate names. The ongoing discussions highlight the delicate balance between protecting these personality interests and maintaining the core functions of the trademark system.