(1) Importance of Strategic Naming
The names of your goods or services play an important role in giving a strong impression to consumers and encouraging them to purchase the goods or the services.
A choice of a goods name or a service name is usually made taking account of whether the name is easy to see and read, carries a positive image, makes a big enough impression, and so on. It often happens that the sales of goods or services depend largely on their names. A name having a likable, approachable touch and being easy to remember can make a bigger impression and spread among consumers more easily.
Choosing a likable, approachable name, however, may pose a risk of getting disadvantages in the registration of the name as a trademark as well as in the use of the trademark, if the name simply consists of words describing the quality or effect of the goods to effectively convey these features to customers or if the name consists of simple words to make it easier to remember the name. The following provides tips for strategic naming from the viewpoint of the Trademark Law.
(2) Matters to note in choosing names
A name must meet the following requirements in order to be registered as a trademark. It is therefore important to take account of these requirements when you consider a name for your goods or service.
The name must enable goods or a service with which the name is used to be distinguished from other goods or services
If you give your goods a name that directly describes the quality of the goods (for example, “Clean” for your newly developed detergent), consumers will be able to image the quality easily and will therefore be more encouraged to buy the goods.
However, such a name directly describing the quality etc. of the goods cannot, in principle, be registered as a trademark, and you are thus unable to obtain an exclusive license of the name or prevent others from using the name. This may cause a significant inconvenience in expanding your business with the goods.
The following are specific examples of a name that cannot be registered as a trademark.
- (1) Common names of the goods or services
e.g., A trademark “PC” for goods classified under “personal computer”
- (2) Names commonly used for the goods or services
e.g., A trademark “Tourist hotel” for a service classified under “rental of temporary accommodation”
- (3) Names descriptively representing the place of origin, the location of provision, quality , etc., of the goods or services
e.g., A trademark “tasty tea” for goods classified under “tea” , A trademark “potato” for goods classified under “snack food”
- (4) Names used by many people for the same type of goods etc.
It is not appropriate for one company to monopolize these names because everybody would need and want to use them.
In some cases, however, a name like the ones above may be registered as a trademark if the name is arranged in the following ways or has become widely known through long time use.
- Write the name in a special font (show the name as a logo)
- Add figure(s) to the name
- Slightly modify the name to make it a coined word (e.g., personify a word by adding “Mr.” or “Miss.”, or change only the final letter of an alphabetical word)
The name must be acceptable under industrial policies in terms of protection of public interests
A name which damages public interests or conflicts with another person’s registered trademark (e.g., a name which compromises the dignity of nationals or an institution, a name which gives confusion of the content or quality of the goods to consumers, etc.) cannot be registered as a trademark.
Examples of the name compromising the dignity of nationals or an institution include a goods name solely consisting of the name of a world heritage site or a goods name containing the word “Olympic”.
Examples of the name causing confusion of the content or quality of the goods include a goods name “XX salt” for goods classified under “sugar”.
The name must be acceptable under industrial policies in terms of protection of private interests
Even the name satisfies the requirements (1) and (2), it cannot be registered as a trademark in situations where a similar name has already been registered as a trademark or is used as a well-known trademark of a third party. Furthermore, if you use the name without the consent of the owner of the registered trademark right, you may be claimed to infringe his/her trademark right.
It is therefore necessary to check whether or not the name you want to adopt has been already registered by a third party. If you find an already registered trademark, you should consider taking measures such as adopting another name, slightly changing the name to avoid infringement, or negotiating with the owner of the already registered trademark for assignment of the trademark right.
(3) Types of names
The following shows variations of the structure of a name.
- (1) Single words
e.g., “vitamin” for goods categorized under software
- (2) Combinations of words (joined)
e.g., “vitamin” + “cap” -> “vitamincap”
- (3) Abbreviations or acronyms
e.g., “vitaca” abbreviated from “vitamincap”
- (4) Words having no lexical meaning (coined words)
When choosing a name that consists of a word or a combination of words, it is important to consider whether the word(s) have meanings (images) that suit the image of the goods. Meanwhile, when naming the goods with a coined word that has no lexical meaning, the selected coined word should have an appearance and sound that match the image of the goods. In other cases (often in cosmetics and fashion industries), a word of a foreign language other than English may be adopted as a name that suits the image of the goods.
Names can be associated with a variety of subjects. They can be corporate names, series names, names of individual goods, etc. The following shows the hierarchy of names.
(1) House marks
House marks, such as corporate names, serve as “an establishment mark” of the company and are often provided in the form of a logo adopted from a part of the corporate name or in the form of a combination of the corporate name with a figure. House marks can be considered the most important because they are widely used and seen by the consumers.
<Examples of registered house marks>
- “TOYOTA” for TOYOTA MOTOR CORPORATION
- “SONY” for Sony Corporation
(2) Family names and category marks
Category marks or family names serve as “a mark that represents a category or a series, which is a broader concept than individual goods.”
<Examples of registered category marks and family names>
- “Carolla” and “Crown” of TOYOTA MOTOR CORPORATION
(3) Pet names
Pet names serve as “a name of individual goods”
<Examples of registered pet marks>
- “Fielder” and “MAJESTA” of TOYOTA MOTOR CORPORATION
- “WALKMAN” of Sony Corporation
- “VIERA” of Panasonic Corporation
(4) Example case of successful naming
Everybody in Japan knows an ice lolly product named “Gari Gari Kun,” which has been registered as a trademark. In fact, the manufacturer originally intended to name the ice lolly simply “Gari Gari.” If they had decided on this name, there would have been little possibility for the name to be registered as a trademark for the goods “ice lolly.” This is because “gari gari” is an onomatopoeia in Japanese representing a crunching sound or a sound of scratching something hard, and would therefore have been deemed to be a descriptive name describing the quality etc. of the ice lolly.
By adding the word “Kun” (meaning “Mr.”), however, the manufacturer succeeded not only in obtaining a trademark registration but also in giving a likable, approachable image to the name by personification. Moreover, they added a character called “Mr. Gari Gari” on the package of the ice lolly, which has created an even stronger impression to attract the customers.
(5) Small and Medium Enterprises (SME) Consultation
Through our SME Consultation, our firm offers specialized support for the unique needs of small and medium-sized enterprises. For details, please visit our SME Consultation page, which also includes information on strategic measures for protecting brands and IP.