Do you know that “ボクササイズ/ Boxercise” is registered trademark owned by boxing gym?

Trademark infringement by “Boxercise”!

I saw a news report that a municipality that was using the name “Boxercise” to hold public lectures paid compensation after the owner of the “Boxercise” trademark pointed it out to them.
I was surprised. I had no idea that the word “boxercise” had been trademarked, since it’s such a common word around here.

Since “boxercise” is a registered trademark, it could be considered trademark infringement if used without the trademark owner’s permission.
However, a widely recognized and commonly used trademark like this can be considered “common name”.

That’s true. But what happens when a trademark becomes a common name?

What is the problem of infringement of the trademark “Boxercise”?

Boxercise” is a type of exercise that incorporates elements of boxing.
While being an aerobic exercise, this exercise involves punching and other boxing movements, and is popular for its stress-relieving effects in Japan.

In recent years, as people have become more health-conscious, exercise courses of “boxercise” have been offered at gyms.

However, a case occurred in which a local government held a “Boxercise” class and was notified by the owner of the “Boxercise” trademark that it had infringed the trademark and had to pay compensation and settlement.

The JPO database (J-PlatPat) revealed that the trademark “Boxercise” was indeed registered.
The owner of the registered trademark seems a private boxing gym.
The designated service is “Class 41: Teaching of knowledge for boxing aerobic exercise and other sports.

The trademark owner has sought compensation for trademark infringement from a number of individuals and organizations that have used the trademark “Boxercise” without permission.

Boxercise” is indeed a widely used name in Japan.
People who used “Boxercise” probably did not know that “Boxercise” was a registered trademark and thought it was a common name.

Making trademark common name

One of the important functions of a trademark is to identify one’s product or service from the others.

In other words, it is an important function of a trademark to indicate that it is the company’s own product. However, even a trademark registered as a coined word may become so widely recognized that it becomes too generalized and no longer functions as an indication of something unique. Such a trademark is considered “common name” and the trademark right is no longer valid.

For example, “巨峰 (Kyoho, grape) “, “うどんすき (Udonsuki, a kind of Japanese noodle food)” and “正露丸 (Seirogan, medicine)” have been judged by the court to be common names.
“サニーレタス (sunny lettuce)” and “ポケベル(Pokeberu, pager)” have been held by the JPO to be common names.

Further, registered trademarks such as “ガチャ (GACHA, capsule toy)”, “プラモデル (plastic model)” and “QR CODE” are widely used in the general public, and it is difficult to say that they fulfill the “function of a trademark in terms of identification of own and other products”.
You may think “What? It’s a registered trademark! I thought it was just a common name!”

Trademark right does not cover common names!

Article 26 of the Japanese Trademark Act stipulates that trademark rights do not extend to common names.

（Limitations of Effects of Trademark Rights）
Article 26　A trademark right has no effect on any of the following trademarks (including those which constitute part of other trademarks):
(i)　a trademark indicating, in a common manner, one’s own portrait, name, well-known pseudonym, professional name, pen name or well-known abbreviation thereof;
(ii)　a trademark indicating, in a common manner, the common name, place of origin, place of sale, quality, raw materials, efficacy, intended purpose, shape, the method or features including time of production or use, quantity or price of the designated goods or goods similar thereto, or the common name, location of provision, quality, articles to be used in the provision, efficacy, intended purpose, modes, method or features including time of provision, quantity or price of services similar to the designated goods;
(iii)　a trademark indicating, in a common manner, the common name, location of provision, quality, articles to be used in the provision, efficacy, intended purpose, modes, method or features including time, quantity or price of provision of the designated services or services similar thereto, or the common name, place of origin, place of sale, quality, raw materials, efficacy, intended purpose, modes, the method or features including time of production or use, quantity or price of goods similar to the designated services;
(iv)　a trademark customarily used for the designated goods or designated services or goods or services similar thereto;

Because of these provisions, it is not possible to claim rights to a trademark that has become a common name, even if it is used by others.

If a trademark owner claims infringement of his/her trademark right, you may argue that the trademark falls under a common name and that the effects of the trademark rights should not extend to the use by the others.

The court or the patent office may decide that the trademark has become a common name, or the company that owns the trademark may voluntarily determine that the trademark has become a common name and terminate its existence.

A trademark that has become common name can be cancelled?

In Japan, it is not possible for a third party to request cancellation of a trademark registration on the grounds that the registered trademark has become a common name.
In the case of the trademark “Udonsuki”, the court has ruled that the trademark has become a common name, but the registration still exists.
If the trademark owner determines that the trademark has become a common name and abandons the trademark registration without renewing it, the right will expire.

On the other hand, in some countries, such as the U.S. and Europe, if a trademark becomes common in use, a cancellation trial can be filed against the trademark registration and the registration can be cancelled.

I see. So if the registered trademark becomes a common name, the trademark owner can no longer claim rights to it.

Summary

If you encounter a case in which a trademark owner notifies you of infringement of his/her rights because the trademark you thought was a common name is in fact a registered trademark, you should consider whether the registered trademark has become a common name or not.
However, such a determination requires specialized knowledge, so we recommend that you consult a patent attorney.

We provide support and consulting services related to intellectual property in all situations, including trademark consultation and infringement countermeasures. Please feel free to contact us through Inquiry Form. Our attorneys specializing in trademarks will be happy to assist you.