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@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 “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.

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.

7. スナック　シャネル

8. 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.

9. A not-so-naïve infringer in a ‘foreign’ country. • Nina Ricci (the owner of L’air du Temps®) challenged a Japanese shoemaker’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.

10. レールデュタン®

11. 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.

12. 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.

13. 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.

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

15. What really matters about trademarks? From legal perspective • Distinctiveness • Whether it should be in the common reserve

16. 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).

17. 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.

18. Thank you Sachiko Shudo shudo@ip.rcast.u-tokyo.ac.jp