2021/09/21Baseball/野球
A trademark registration for “野球拳おどり” (Yakyu-ken Dance )
“野球拳”(Yakyu-ken) is a Japanese traditional game. “Yakyu” means baseball, “ken” means rock-paper-scissors.
The Yakyu-ken is where two opponents play rock-paper-scissors while singing and dancing, and the loser has to take off their clothes piece by piece. The Yakyu-ken is famous for “宴会芸” (a special party stunt) in Japan, especially in the geisha culture.
The original Yakyu-ken has no undressing, however. Mr. Goken Maeda, who had worked for the Iyo Railway in Matsuyama city in Ehime prefecture, reportedly originated the Yakyu-ken for a special party stunt for his company’s baseball team in 1924, that is, he wrote its song and lyric (currently in the P.D.) and choreographed its dance. Subsequently, the Yakyu-ken spreaded nationwide as a special party stunt. In its process, it is said that the Yakyu-ken was adapted in such a way that participants are being forced to drink alcohol or take off their clothes if they lost in rock-paper-scissors.
Matsuyama city developed the “野球拳おどり” (Yakyu-ken Dance) arranging the Yakyu-ken and incorporated the Yakyu-ken Dance event into “松山まつり” (Matsuyama Festival) since the summer of 1970. It has organized a dance contest for the Yakyu-ken Dance in the Festival.
You can see the Yakyu-ken Dance here.
In 2020, Matsuyama city and Matsuyama Chambers of Commerce and Industry filed trademark applications for “野球拳おどり”(Yakyu-ken Dance) and “松山まつり”(Matsuyama Festival) which were in the Class 41 (the Nice classification) and “arranging ,conducting and organizing a festival” as designated service.
Japan Patent Office (JPO) allowed to register “野球拳おどり”(Yakyu-ken Dance) as a character trademark in this August, whereas it rejected “松山まつり”(Matsuyama Festival) since there was no distinctiveness.
JPO has issued the handling of a trademark application for marks with historical, cultural or traditional value in the Trademark Examination Manual(“Manual”)*.
In the Manual, the “cultural products, etc” defines tangible and intangible cultural products, ancient sites and nature, etc. which have historical, cultural and traditional value as valuable property inherited from our predecessors and are serving as the symbols of rich culture. The cultural products, etc include music, dance, events, etc.
With regards to the handling of trademarks consisting of marks indicating cultural products, etc, JPO suggests the following two points;
1) trademarks consisting of marks indicating cultural products, etc. should be examined from the public viewpoint of whether or not an exclusive right should be granted to them as trademarks,
2) marks indicating cultural products, etc. should also be examined from the viewpoint of whether they function as signs to distinguish one’s own goods or services from those of others.
According to the Manual, JPO should reject an application for the trademarks consisting of marks indicating cultural products, etc in light of the above points.
From the public viewpoint, JPO will apply the Article 4(1)(vii) of the Trademark Act. This provision stipulates that no trademark shall be registered if the trademark is likely to cause damage to public policy. JPO determines whether or not this provision applies by taking into consideration the circumstances set forth in i. to vii. below in a comprehensive manner.
- The degree of being well-known of the cultural product, etc.
- Recognition of the cultural product, etc. by the citizen or local residents
- State of use of the cultural product, etc.
- Relationship between the state of use of the cultural product, etc. and the designated goods or designated services
- Background, purpose and reason for filing an application
- Relationship between the cultural product, etc. and the applicant
- Characteristics of the person managing and owning the cultural product, etc.
In the distinctiveness, JPO will apply the Article 3(1)(iii) of the Trademark Act. This provision stipulates that if a trademark 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, the trademark may not be registered. JPO determines whether or not this provision applies by taking into consideration the following facts in a comprehensive manner.
- The degree of being well-known of the cultural product, etc.
- The relationship between the cultural product, etc. and the designated goods or designated services.
- The actual state of transaction of the designated goods or designated service.
In the Manual, it doesn’t refer clearly what “historical, cultural and traditional value” is. I take it to mean that its “value” means to have a long history and widespread because the cases cited in the Manual have a long history and widespread, e.g. “Swan Lake”, “Pyramid of Khufu”,”Sakurada Familia”.
I believe “野球拳”(Yakyu-ken) has nearly a hundred years and widespread, also, it has the “value”. Thus, the Manual will apply to “野球拳”(Yakyu-ken). On the other hand, “野球拳おどり”(Yakyu-ken Dance) consists of the word “野球拳”(Yakyu-ken) and “おどり”(Dance), and it was developed in 1970. It has a brief history, thus it doesn’t have the “value” at the moment.
In my opinion, the trademark examiner of JPO decided that “野球拳おどり”(Yakyu-ken Dance) differs from “野球拳”(Yakyu-ken) based on their historical background and “野球拳おどり”(Yakyu-ken Dance) is distinctiveness.
The Autor Takao Ohashi
* You can see the Manual here. The Manual suggests handling of trademarks consisting of marks indicating cultural products, etc in details.