Masako NISHIMURA, Trademark/Patent Attorney
Since Tokyo was chosen to host the 2020 Olympic and Paralympic games, media have been calling attention to taglines and marks that may be adopted by companies, shops, shopping centers and others. Media reported as follows.
(Nihon Keizai Shimbun, 2013.9.30)
SALES BATTLES FOR THE TOKYO OLYMPICS, BEWARE OF TRADEMARKS, CREATING AN ASSOCIATION WITH THE OLYMPICS IS NOT ACCEPTABLE.
The following are examples that may violate the Trademark Laws or the Unfair Competition Protection Laws, where their use may suggest an association with the Tokyo Olympics.
“やったぞ東京” (We did it, Tokyo)
“おめでとう東京” (Congratulations, Tokyo)
“祝！東京決定” (Celebration! Designation of Tokyo)
“2020東京記念” (2020 Tokyo Commemoration)
(Asahi Shimbun, 2013.9.10)
“CONGRATULATIONS TOKYO” IS NOT ACCEPTABLE, SALES BATTLES FOR THE TOKYO OLYMPICS, BEWARE OF WORDINGS.
The following are the examples that JOC prohibits to use (except commercial uses by official sponsors).
“4年に一度の祭典がやってくる” (A festival once in four years is coming)
“おめでとう東京” (Congratulations, Tokyo)
“やったぞ東京” (We did it, Tokyo)
“招致成功おめでとう” (Congratulations on success in the voting)
“日本選手、目指せ金メダル” (Japanese athletes, win Gold medals)
“日本代表、応援します！” (We support the Japan National Teams!)
The judgment whether or not these expressions violate the Laws should be made according to each article stipulated under the Trademark Laws or the Unfair Competition Laws. The matter of concern is not only the expression itself but also the appearances and circumstances in which the mark is actually used. It should be judged on a case-by-case basis; namely, if a use of a mark is a free ride of or likely to cause confusion with the so-called “Olympic” trademarks reserving some rights.
Let’s look into cases where a use of a mark violates the Trademark Laws or the Unfair Competition Laws.
1. Regulations under the Trademark Laws
Such marks as “オリンピック(“Olympic” in katakana characters)” and “OLYMPIC” are owned by JOC (Japan Olympic Committee) and IOC (International Olympic Committee). However, other older marks registered by other parties still exist. e.g.: “OLYMPIC” by Mizuno registered in 1918 and “オリンピック印 (Olympic-sign in Japanese)” by Mitsui & Co., Ltd. registered in 1929.
Other marks including the word “Olympic” are also registered by other parties because they are not similar to “Olympic” in entire marks and have no unfair intentions. e.g.: “アジア太平洋数学オリンピック (Asia Pacific Math Olympics),” “日本数学オリンピック (Japan Math Olympics),” and “日本ジュニア数学オリンピック (Japan Junior Math Olympics)” by Math Olympic Incorporated Foundation.
For examining registrability of a mark including the word “Olympic”, Article 4(1)(vi) of the Trademark Laws comes into question first.
Trademarks which are identical with, or similar to, a famous mark indicating a State or a local public entity or an agency thereof or a non-profit organization or enterprise working in the public interest; Trademarks which are identical with, or similar to, a famous mark indicating a State or a local public entity or an agency thereof or a non-profit organization or enterprise working in the public interest;
Marks falling under Article 4(1)(vi)
“Olympic,” “IOC,” and “JOC” are examples that come under Article 4(1)(vi) in the trademark examination standard of the Japan Patent Office. Whether a mark in question is similar to any of them or not is the concerned matter here. In the aforesaid example, “Math Olympics” were judged not to be similar as a whole.
Decision on Opposition No. 2006-90197 for the mark “Asia Pacific Math Olympics” affirmed that “Olympic” was combined with other words to mean “competition” and that the entire mark should be understood to represent “mathematics competition in Asia Pacific region” giving consideration to the designated services “organization and provision of math competition and providing information therefor.” A similar example is “技能オリンピック (technical skill Olympics)” cited in the 3rd edition of Concise Katakana Dictionary published by Sanseido Bookstore Ltd.
A mark combining “Olympic” and other words would not be registered if it comes under Article 4(1)(vi) or any of the other articles listed below. Furthermore, registrability of a mark suggesting a link with “Olympic” is judged in the light of Articles 4(1)(vii) to 4(1)(xix) below.
1. 4(1)(vi) Trademarks which are identical with or similar to an “Olympic,” Olympic rings, and others known as indicating IOC or JOC.
2. 4(1)(vii) Trademarks liable to contravene public order or morality, including an intention to free ride on the fame.
3. 4(1)(viii) Trademarks containing a name or a well-known abbreviation of IOC or JOC.
4. 4(1)(x) Trademarks identical or similar to a well-known unregistered trademark of IOC or JOC.
5. 4(1)(xi) Trademarks identical or similar to a registered trademark of IOC or JOC.
6. 4(1)(xv) Trademarks which are liable to cause confusion with goods or services provided by IOC or JOC.
7. 4(1)(xvi) Trademarks liable to mislead as to the quality of the goods or services by containing a word suggesting an association with the Olympics.
8. 4(1)(xix) Trademarks identical or similar to well-known trademarks even if it is not likely to cause confusion.
Some years back, such marks as “オリンピックの夢(Olympic Dreams)” and “ミスオリンピック（Miss Olympic）／Miss OLYMPIC” were registered in 1988 and 1993 (both registrations designate “Confectionery, bread and buns”). However, they would be more severely judged in terms of similarity and possibility of confusion under the present practices.
Besides registrability of marks mentioned above, judgment of infringements of registered trademarks of IOC or JOC will be made in light of whether a mark identical or similar to a registered trademark is used on the same or similar goods or services as those in the registration. So, if a mark and its use are not within the scope of similarity or identicalness stipulated under 4(1)xi, it would not be an infringement of trademark rights, although it might be considered a violation of the Unfair Competition Protection Law. Thus, it is advisable to avoid using a mark refused under 4(1)x or (1)xv since it may be liable to cause confusion, even though the mark was not within the scope of 4(1)xi. In addition, a mark which is refused under the Trademark law 4(1)xvi, is also likely to fall under the Unfair Competition Protection Law Article 2(1)xiii.
The tagline “がんばれ！ニッポン！(Come on! Japan!) ” registered by JOC, is also registered as a defensive mark designating services such as information services in class 45 (Reg. No. 4902995). Thus the fame of the JOC mark was affirmed by the JPO. Therefore, the use of it would be restricted under the Unfair Competition Law, if the sign was used as a trademark (i.e. with an aim to attract consumers’ attention to sell goods/services), regardless of goods or services.
2. Regulations under the Unfair Competition Law
(1) Article 2(1)i and ii.
Indications of goods, etc. identical with or similar to the well-known indications of IOC or JOC are prohibited under 2(1)(i). This regulation would be applied to famous indications under 2(1)(ii), regardless of any possibility of confusion. Thus, the aforesaid “がんばれ！ニッポン！(Come on! Japan!)” seems to be the mark that people have to be very careful to use. With regard to the expressions listed by the media, which are not recognized as famous indications of IOC or JOC, the matter of concern is a likelihood of confusion with the businesses of them.
(2) Article 2(1) xiii
This article is applied when an indication is liable to induce erroneous assumptions for quality of goods, etc. by including words connected to “Olympic.”
(3) Article 17 (Prohibition from use in trade of mark of International Organization)
This article stipulates as follows.
No one may use, in such matter as to induce the erroneous assumption that a connection exists with the International Olympic Committee, an organization similar to international organization prescribed by the ordinance of the Ministry of Economy, Trade and Industry, a mark identical with or similar to “国際オリンピック委員会（International Olympic Committee in Japanese）,” “INTERNATIONAL OLYMPIC COMMITTEE,” ” IOC,” and “the Olympic symbol of five rings,” prescribed by the ordinance of the Ministry of Economy Trade and Industry. However, this provision shall not apply when the authorization is given by the international organization concerned.
Ref.: Uses of the following marks require permission by JOC.
1. Marks and emblems of JOC
Emblems (1) and (2)
“がんばれ！ニッポン！ (Come on! Japan!) “
JOC communication marks, etc.
2. Portraits of athletes owned by JOC
JOC symbol athletes
JOC second symbol athletes, etc.
3. Pictures and footage of Japan national teams for International Competitions dispatched by JOC.
4. Marks, emblems, pictures and images of International Competition managed by JOC such as Olympics and Asian Games.
Ref: Trademarks in connection with Olympics by IOC, JOC, etc.
See: website of Japan Patent Office