Can I register a trademark that contains the name of a place?

Registration of a trademark containing the name of a place

I would like to come up with a trademark that appeals to local products and enlivens the region, like “Edo Kiriko”, “Naruto-Kintoki”, or “Imabari Towel”!

The specialty products you just mentioned are registered under the “Regional Collective Trademark” system, and they are registered after meeting certain conditions.
Please note that, in principle, registration of a trademark consisting of “only the name of a place” or “the name of a place + the general name of a product (service)” is not allowed under the normal trademark registration system.

Recently, we often see examples of local specialty products that have attracted attention and have been successfully branded.
Many companies may also consider a trademark that includes the name of a place.
However, in principle, a name consisting of “only the name of the place” or “the name of the place + the general name of the product (service)” cannot be registered as a trademark.

Why cannot I register a trademark containing a place name?

Place names are not for the exclusive use of a particular individual or company, but should be used by many individuals and companies involved in the area.
For example, if a specific individual or company files an application for the trademark “Osaka okonomiyaki (name of the place + general name of the product)” and this is granted registration, it may be difficult for restaurants and other businesses other than the right holder that are currently selling or offering okonomiyaki in Osaka to freely offer their products.
The Japanese Trademark Law defines “trademarks that will not be registered even if an application is filed” as “iii) Trademarks that merely indicate the place of origin, place of sale, quality, etc., of goods or the place or quality of provision of services (Article 3(1)(iii) of the Trademark Law).
This is because a name consisting merely of “the name of the place” or “the name of the place + the general name of the goods (service)” does not fulfill the function of a trademark as a distinguishing mark.
In the case of the example of “Osaka okonomiyaki,” the only recognition that would arise would be “okonomiyaki made in (or served in) Osaka,” which means that it has no distinction.

Exceptionally, there are registered trademarks that include the name of a place.

We have explained that, in principle, a name consisting of “only the name of a place” or “the name of a place + the general name of goods (service)” cannot be registered as a trademark.
However, there are exceptional cases where a registered trademark includes the name of a place.
A typical example is “Yubari Melon” (Trademark Registration No. 2591067, etc.).
“Yubari Melon” was granted registration because it is widely recognized throughout Japan and is not merely an indication of a place of origin, but has reached the point where it can be distinguished from other melons.

The Japanese Trademark Law also provides that a trademark that falls under the category of “trademark for which an application for registration has not been filed” may be registered if, as a result of its use, consumers are able to recognize it as goods or services pertaining to the business of a certain person (Article 3(2) of the Trademark Law).

In this case, the applicant is required to submit documentary evidence to prove the trademark and goods or services actually used, the period of use, region, production volume, number of advertisements, etc., as an explanation that the use of the above trademark has made it possible to distinguish the goods or services of the applicant from those of others.

Regional Collective Trademark System

There are also registered trademarks such as “Edo Kiriko”, “Naruto-Kintoki”, and “Imabari Towel”.
These are registered under the “Regional Collective Trademark System”.

As the name of the system suggests, this is not a system that can be used by individuals or companies. But it was introduced to protect local brands and stimulate the local economy, and the JPO has shown a positive attitude toward trademark registration under this system.

Regional Collective Trademark must meet certain requirements, such as being composed entirely of letters and being applied for by a regionally based organization.
For an overview, please refer to the following link page.

●　Regional Collective Trademark System | Japan Patent Office

Possible if combined with a word that is not a general name for goods (services)

It does not necessarily mean that if the name of a place is included, it cannot be registered.
If you search for “Osaka XX” or “XX Osaka” on the patent information platform “J-Platpat”, you will find that there are many registered cases.

These registered examples are considered to be registered based on such factors as the following.

• The name must not be a combination of a general name of goods (services) (the part of the name that is not a geographical name must have distinctiveness).
• The combination with a distinctive logo or figure.
• The distinctive character must have been acquired through use.

If you wish to consider a trademark that includes a place name, consider the above methods.

If I can create a feature other than the name of the place that makes it immediately recognizable as our product, I may be able to register it!

Comprehensive support measures for cases where a Japanese place name or one’s own trademark has been applied for and registered by others in China and Taiwan

According to the JPO, there have been a number of cases in which Japanese place names, trademarks, and local brands have been registered by third parties in China and Taiwan.
If you are considering how to deal with the risk that this may hinder your business development in China or Taiwan, please check the JPO’s website for information on how the JPO can help.

Summary

Trademarks that include place names can be expected to give credibility to consumers and increase the value of the trademark as a brand.
However, for a single individual or company to file a trademark application, it is recommended to combine it with a distinguishing word or with a distinctive logo or figure.

If you have a name of your own in mind, and it contains the name of a place, can it register? If you are wondering whether you can register your mark, please contact our office. Our patent attorneys specializing in trademarks will support you.
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