Held: The applied-for-trademark “JPX” cannot be said to contain a well-known abbreviation of another entity, Japan Exchange Group, Inc.

June 30, 2023

Sintering machines [for chemical processing]; other chemical processing machines and apparatus; casting machines and apparatus; metalworking machines and tools; plastic processing machines and apparatus; semiconductor manufacturing machines; washing machines for industrial purposes [laundry]; food mixing machines for commercial use; food peeling machines for commercial use; food cutting, chopping and slicing machines for commercial use; dishwashers for industrial purposes; shafts, axles or spindles, machine elements other than land vehicles; bearings, machine elements not for land vehicles; shafts, couplings or connectors, machine elements not for land vehicles; in class 7

(1) As for Article 4(1) (viii) of Japanese Trademark Act:

Article 4(1) (viii) of Japanese Trademark Act provides that if a trademark contains a portrait of another person, or a name, a well-known pseudonym, a professional name or a pen name of another person, or a well-known abbreviation thereof (except those the registration of which has been approved by the person concerned), such a trademark should not be registered.

It should be noted that here, a “person” includes an entity.

Requirements of trademark registration are judged for each of designated goods or services.  Thus, it is necessary to consider well-knownness of an abbreviation of another person in relation to the field of the designated goods of the applied-for-trademark in order to apply Article 4(1) (viii) of Japanese Trademark Act (cf. The Tokyo High Court decision on September 24, 2002).

(2) Whether the applied-for-trademark falls into Article 4(1) (viii) of Japanese Trademark Act:

The applied-for-trademark consists of letter string “JPX” in standard characters.  The appeal examiners were unable to find that “JPX” has been known as an abbreviation for “Japan Exchange Group, Inc.” among consumers/traders generally and widely in the field of the designated goods of the applied-for-trademark (sintering machines [for chemical processing]; other chemical processing machines and apparatus; etc.) or any facts that “JPX” should be recognized as “Japan Exchange Group, Inc.” for famousness in the above field through ex-officio searches even if “JPX” has been known as an abbreviation for “Japan Exchange Group, Inc.” among consumers/traders in the field of finance.

With the above in mind, it is not possible to say that the applied-for-trademark contains a well-known abbreviation of another person (entity).

(3) Conclusion

Thus, the applied-for-trademark should be registered.

The Tokyo High Court decision cited in the above judgment stated that requirements of trademark registration are judged for each of designated goods or services. Thus, the well-knownness of an abbreviation of another person or entity in relation to the field of the designated goods of the applied-for-trademark should be considered in order to apply Article 4(1) (viii) of Japanese Trademark Act.