Trademark Distinctiveness in a Global Context

1
Trademark Distinctiveness in a Global Context

• Sachiko Shudo, PhD
• Research Center for Advanced Science and
  Technology, U of Tokyo
• shudo_at_ip.rcast.u-tokyo.ac.jp

2
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)

3
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.

4
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.

5
Collisions as trademarks go international

• Its already taken!
• AnGes MG (a leading university start-up in Japan)
  used to be called Medgene.
• There already existed a service mark named
  MedGeneSM (Harvards medical database) and a
  company called MedGen in the U.S.
• Medgene changed its name in 2002.

6
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.

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A naïve infringer in a foreign country (contd)

• 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.

9
A not-so-naïve infringer in a foreign country.

• Nina Ricci (the owner of Lair du Temps)
  challenged a Japanese shoe makers trademark
  (REERU DU TAN in katakana (not romanized)).
• The JPO denied the opposition.
• The Tokyo High Court upheld JPOs decision.
• The Supreme Court reversed in 2000.

10
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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 scientists 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.

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Generic term in country A trademarked in country
B (contd)

• 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 defendants usage. The Osaka High Court
  upheld this decision in May 2003.

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Generic term in country A trademarked in country
B (contd)

• Are foreign-origin words in danger of becoming
  privatized? If so, doesnt 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.

14
The scope of distinctiveness

• If it should be somewhere between national and
  universal, how far can we go?
• Should we check every language on earth?

local discourse
universal
regional
national
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What really matters about trademarks?

• From legal perspective
• Distinctiveness
• Whether it should be in the common reserve

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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).

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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.

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Thank you

• Sachiko Shudo
• shudo_at_ip.rcast.u-tokyo.ac.jp