In a recent appeal decision, the Japan Patent Office (JPO) upheld an examiner’s refusal to extend protection to WHITNEY HOUSTON, but eventually wound up granting the trademark WHITNEY HOUSTON because the Estate of Whitney Houston deleted all music recordings from goods designated under the International Registration (IR) no. 1204044. [Appeal case no. 2016-650045].
Whitney Houston, an American singer, with an estimated 170–200 million records sold worldwide and actress who tragically died by drowning and the “effects of atherosclerotic heart disease and cocaine use, on February 11, 2012 in Beverly Hills . She was one of the best-selling musical performers of 1980s and ‘90s and undoubtedly one of the most famous singers in the world.
IR no. 1204044, registered in the name of The Estate of Whitney Houston on March 24, 2014, designates following goods in class 9, 16 and 25.
International class 9 – Series of musical sound recordings; series of musical video recordings; downloadable musical sound recordings; downloadable music video recordings featuring music and entertainment; audiovisual recordings featuring music and entertainment; downloadable audiovisual recordings featuring music and entertainment; downloadable ringtones for mobile phones and wireless devices.
International class 16 – Posters; concert and souvenir programs; calendars; song books.
International class 25 – T-shirts; shirts; sweatshirts; hooded sweatshirts; hats; headwear.
JPO Initial Examination
At an initial examination proceeding, JPO examiner refused the trademark with respect to all goods in class 9 on the grounds that consumers can easily perceive or conceive the late Whitney Houston, an American famous singer from the applied mark “WHITNEY HOUSTON” written in a common font design. Besides, in a business to deal with music recordings, the title of a song or an album as well as name of performer or player are routinely indicated on goods or packages to show contents of it. Therefore, relevant consumers and traders at a sight of the applied mark used on designated goods in class 9 are just likely to conceive the goods contains music or performance by the late Whitney Houston. If so, IR no. 1204044 is subject to refusal based on Article 3(1)(iii) of the Trademark Law. Furthermore, when the applied mark is used on music recordings unrelated to Whitney Houston, consumers will surely be in trouble since they expect the goods contains song or performance of the late Whitney Houston. If so, it should be refused for registration based on Article 4(1)(xvi) due to misconception of quality of goods.
Article 3(1) of the Trademark Law is a provision to prohibit descriptive marks from registering. Section (iii) of the article aims to remove any mark merely or directly suggesting quality of goods and services.
Article 3(1)?Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:
(iii)?consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision;
New Trademark Examination Guideline
Trademark Examination Guideline (TEG) pertinent to Article 3(1)(iii) provides that where a trademark is widely recognized by consumers as a name of a singer or of a music group in respect of goods “sound recorded magnetic tapes, sound recorded compact disks, phonograph records” or its equivalent, the mark is deemed to indicate the quality of the goods.
Likewise, where a trademark is recognized to clearly indicate specific contents of articles provided for use by a person to which the service is provided (“cine films,” “image recorded magnetic tapes,” “sound recorded magnetic tapes,” “recorded compact disks,” “phonograph records,” etc.) such as their classifications and types in respect of such services as the rental of “cine films” “image recorded magnetic tapes” “sound recorded magnetic tapes,” “recorded compact disks,” “phonograph records,” etc., is deemed to indicate the quality of a service.
- Trademark “Japan Folksong Collection” in respect of a service “Rental of sound recorded compact disks”
- Trademark “Suspense” in respect of a service “Rental of cine films”
Article 4(1) of the Trademark Law is a provision to provide unregistrable trademarks. Section (xvi) of the article aims to prohibit registration of any mark likely to mislead quality of goods or services.
Article 4(1) Notwithstanding the preceding Article, no trademark shall be registered if the trademark:
(xvi) is likely to mislead as to the quality of the goods or services
Since The Estate of Whitney Houston deleted all goods classified in class 9 from Japan, a designation country of IR no.1204044, after the initial refusal, the Appeal Board admitted registration of trademark “WHITNEY HOUSTON” with respect to remaining goods, namely, “Posters; concert and souvenir programs; calendars; song books” in class 16, “T-shirts; shirts; sweatshirts; hooded sweatshirts; hats; headwear” in class 25.
Comments from author
Result seems a bit of a trick. It means the name of Whitney Houston functions as a source indicator when used on song books and apparel, but a mere descriptive indication when used on music recordings though her fame never changes depending on the goods. Having reviewed examination result of IR no. 1204044 at other designation countries by means of ROMARIN , the trademark confronted with the same refusal in Singapore. Apparently, registrability of a famous singer name as trademark varies depending on jurisdiction, goods or services and whether he/she is alive or not.