Mar 1, 2024
Japan: Trademark Consent System
The Act for Partial Revision of the Unfair Competition Prevention Act was passed and promulgated as Act No. 51, June 14, 2023. This law introduces a consent system under the Trademark Law, which will take place on April 1,2024.
Transitional Measures
All applications for trademark registration filed by March 31, 2024, will not be subject to the consent system even if examination is pending on or after April 1, 2024.
If an application for trademark registration is filed by March 31, 2024, and a divisional application is filed on or after April 1, 2024, as the original application, the filing date is retroactive (Article 10(ii)), and the divisional application is not eligible for the consent system.
If a priority claim under the Paris Convention, etc. is made on or after April 1, 2024 on the basis of a first application filed by March 31, 2024, the consent system may be applied.
The consent system may be applied to an international application for trademark registration designating Japan (international application for trademark registration under the Protocol to the Madrid Agreement) for which the date deemed as the filing date of the application for trademark registration (the international registration date or the date of subsequent designation) (Article 68-9(i)) is on or after April 1, 2024.
1. What is the consent system?
A consent system is a system that allows the concurrent registration of a trademark that is identical or similar to a previously registered trademark of another party, if the owner of the previously registered trademark consents to the registration of both trademarks.
2. Reasons for introducing the consent system
The reason the consent system was not implemented before was due to the risk of confusion of origin caused by the coexistence of identical or similar trademarks, and as an alternative, it was necessary to assign the application for trademark registration to the trademark owner and to make a contract of assignment and transfer of trademark rights after registration. However, the assignment-back process involves complicated procedures such as negotiations with the trademark owner and is time-consuming and costly. At the same time, a lot of countries and regions overseas have already introduced the consent system*¹, which allows to conclude consent agreements between multiple countries, but since Japan never had such a system, it made the trademark registration process much more challenging.
In order to solve this problem, Japan introduced the consent system, which allows the registration of a trademark that is identical or similar to a previously registered trademark of another person, even if both trademarks have been filed with the consent of the proprietor of the previously registered trademark.
However, even with the consent of the proprietor of the prior registered trademark, if there is still a likelihood of confusion of origin, the registration will be denied as a conditionally acceptable consent. In the examination process, it is confirmed that there is no risk of source confusion and after registration, the interests of consumers are protected by making it possible to request an indication to prevent confusion (Article 24-4(1)(i) of the Trademark Law) or request a trial for cancellation of unauthorized use (Article 52-2 of the Trademark Law).
In addition, the provisions of the anti-confusion indication claim and the unfair use cancellation trial will apply from April 1, 2024 to trademarks that are concurrently registered as of April 1, 2024 under the assignment-back agreement.
*¹ Countries with a consent system
U.S. (conditionally acceptable type), EU (no examination of relative reasons for refusal), China (conditionally acceptable type type), Taiwan (conditionally acceptable type type), Singapore (conditionally acceptable type type), New Zealand (fully acceptable type)
Conditionally acceptable consent system: A system where a trademark may be registered only with the consent of the trademark owner and where there is no likelihood of confusion of origin.
Fully acceptable consent system: A system where a trademark similar to a previously registered trademark of another applicant may be registered without further examination with the consent of the trademark owner.
3. Consent system process
(1) Examination stage
A trademark that falls under Article 4(i)(11) of the Trademark Law, Article 4(1)(11) does not apply if the prior trademark owner has given his/her consent and there is no risk of confusion of origin between the prior registered trademark and the applied-for trademark (hereinafter referred to as “both designs”),may still be registered (Article 4(4)(iv)*²).
(i) Notice of reasons for refusal under Article 4(i)(11)
If the examiner concludes that the applicant A’s applied trademark and the registered trademark of the prior trademark owner B are similar, the examiner will notify the applicant A of the reasons for refusal under Article 4(i)(11).
(ii) Consent agreement by the parties
An agreement between Applicant A and Prior Trademark Holder B that both trademarks are allowed to be registered.
(iii) Submission of documents
Based on the agreement between the parties, applicant A submits to the JPO a letter of consent from the prior trademark registration holder B and a document stating the status of use of the trademark.In such case, it is possible to argue that Article 4(1)(11) does not apply, while Article 4(4) does apply.
(iv) Decision of Registration / Decision of Refusal
(1) The examiner shall examine whether or not there is any likelihood of confusion between the two trademarks, taking into consideration the contents of the documents submitted.
(2) If the examiner finds that there is no likelihood of confusion, the application of Article 4(1)(11) is excluded.
(3) Trademarks for which the application of the consent system has been approved will be granted registration if no other reasons for refusal are applicable.
Such trademarks are planned to be publicized on J-PlatPat to let the third parties know that the trademark has been registered under the consent system.
If Article 4(iv) is applied and a registration assessment is made under the Consent System, it will be indicated to that effect.
(4) For trademarks for which the application of the consent system is not approved, the decision of refusal will be based on Article 4(1)(11). Even in such a case, in principle, the application will not be immediately rejected, and it might be required to submit additional materials.
(2) After registration
After concurrent registration under the consent system, it is possible to request an anti-confusion indication and a request for a trial for cancellation of unauthorized use.
(i) Claim for indication of prevention of source confusion (Article 24-4(1)(i), (ii))
If the use of a trademark by one proprietor is likely to cause harm to the business interests of the other proprietor (including damage to the registered trademark’s function as an indication of origin), the proprietor may request that an appropriate indication to prevent confusion be affixed.
(ii) Request for a trial for cancellation of unauthorized use (Article 52-2(i))
Either party A or B may file a request for a trial for cancellation of unfair use where either party has used the trademark for the purpose of unfair competition in such a way as to cause confusion between the trademark and the origin of the other party’s trademark, and as a result, confusion of origin has actually arisen.
It is also possible to request an anti-confusion indication or a request for a trial for cancellation of unauthorized use for assignment back procedure made prior to the registration of establishment (Article 24-4(1)3 and Article 52-2(1)).
4. Examination contents (article 4(iv)*²)
Article 4(iv) of the Trademark Law is a new article added with the introduction of the consent system since it requires that there is no risk of confusion with the consent of others, which is the consent of the right holder of a prior registered trademark.
Article 4, Paragraph 4 of the Trademark Law (Exception to Registered Trademarks of Others Relating to Prior Applications) states that even if a trademark falls under Article 4, Paragraph 1, Item 11 of the Trademark Act, the provisions of the same item shall not apply to cases where the trademark registration applicant has obtained the consent of another person in the same item to obtain trademark registration, and there is no risk of confusion between the goods or services for which the trademark is used and the goods or services related to the business of the trademark owner, exclusive right holder, or non-exclusive right holder of the registered trademark of another person in the same item.
(1) Consent of others
At the time of assessment, it is determined whether there is a valid consent of the prior registered trademark right holder. Even after registration, it is necessary to ensure the prevention of confusion of origin between the prior registered trademark and the applied-for trademark.
(2) Cases where Article 4(iv) is not applicable regardless of the actual use of the trademark
If identical or similar trademarks are used on the same goods, etc., there is a very high likelihood of confusion, regardless of any agreement between the parties concerned, and this trademark is excluded from the application of Article 4(iv).
In addition, trademarks that are identical to the cited trademarks (including those differing only in scale) and used in connection with the same designated goods, are in principle, considered highly likely to cause confusion.
(3) Time of determination of no likelihood of causing confusion
If circumstances change in a way that causes confusion after the registration has been granted, a registered trademark that is likely to cause confusion will coexist, which is contrary to the protection of consumers. Therefore, the time of judgment of no likelihood of causing confusion is set at the time of the examination and after the registration.
(4) Confusion shall be judged not only on the basis of likelihood of confusion in the narrow sense but also in the broad sense.
To determine whether the goods or services actually used or intended to be used (hereinafter referred to as “goods, etc.”) are misidentified as those pertaining to the business of another person, ｔhe confusion in the narrow sense and in the broad sense are used as a judgement to determine whether there is a likelihood of confusion.
(i) Confusion in the narrow sense
Cases where there is a likelihood of confusion as to the origin of the goods, etc. among consumers of the goods, etc., due to their being mistakenly believed to be goods or business of the holder of trademark right, pertaining to the registered trademark of another person.
(ii) Confusion in the broad sense
Confusion in the broad sense, where the goods are misidentified as those pertaining to the business of a person who has some economic or organizational relationship (capital relationship, group company relationship, etc.) with the holder of trademark right, exclusive right to use or non-exclusive right to use pertaining to the registered trademark of the other person.
(5) How to determine likelihood of causing confusion
Article 4(1)(15) of the Trademark Law also determines whether there is a likelihood of confusion, and Article 4(4) is similar in that it determines whether there is no likelihood of confusion by comprehensively considering various specific circumstances.The following items (1) to (8) are to be taken into consideration as a general rule.
(1) Degree of similarity between the applicant’s trademark and the prior registered trademark
(2) The degree to which both trademarks are well-known
(3) Whether both trademarks consist of a coined word or have a distinctive feature in terms of composition
(4) Whether both trademarks are house marks
(5) Whether the enterprise has the potential to diversify its business
(6) Relevance between goods, between services, or between goods and services
(7) Commonality of consumers of the goods, etc.
(8) The manner in which both trademarks are used and other actual conditions of trade
If the applicant submits evidence that reveals the specific manner in which the trademarks are used or other actual conditions of trade, such evidence will be taken into consideration:
1) Structure of the trademark to be used
a) Always using the same positional relationship between figures and letters, which are the components of the trademark.
b) Always using a specific color or typeface
2) Method of use of the trademark
a) Only used in a specific position on the packaging of the goods.
b) Always used in combination with other marks such as company name, company emblem, etc.
c) A strike-through indication (an indication denying that the goods, etc. are related to the business of a specific person) is always added.
3) Goods
a) One uses the cited mark only for the goods “computer programs for games” among the designated goods “computer programs” and the other uses the applied-for mark only for the goods “computer programs for medical use”.
b) One uses the cited trademark only for goods in the high price range above a certain amount, and the other uses the applied-for trademark only for goods in the low price range below a certain amount.
4) Method of sale and provision (e.g.) One is sold to an unspecified number of people at retail stores, etc., while the other is made-to-order only through individual sales.
5) Season of sale and supply
(e.g.) One sells only in the spring, while the other sells only in the fall.
6) Region of sale/supply
(e.g.) One is sold only at stores in Hokkaido, while the other is sold only at stores in Okinawa Prefecture.
7) Measures to be taken by the parties to prevent confusion
(e.g.) If there is a likelihood of confusion between the two trademarks, the other party is to be notified to that effect and measures taken to prevent or eliminate the confusion upon consultation with the other party.
(6) Circumstances that can be taken into consideration in the direction of denying the likelihood of future confusion are circumstances that are recognized as not changing in the future among those described in (4) above.
(i) Where it is agreed that the trademark will not be changed in the future. The applicant has submitted a document containing an agreement between the parties to the effect that the specific circumstances relating to both trademarks will not change in the future (e.g., an agreement to the effect that the specific circumstances described in (5) above will not change, such as that the company name will always be used together) or a summary of such an agreement.
(ii) Where it is found from the evidence that the circumstances will not change in the future.
In addition to the cases based on the above agreement, there are reasonable grounds to believe that the specific circumstances regarding the two trademarks will not change in the future, based on the evidence submitted.
5. Submission of documents (Article 4(iv))
A document that can confirm the specific use of both trademarks (e.g., specific matters regarding the manner of use of both trademarks and other actual conditions of transactions) must be submitted.
(1) Written agreement
(i) A document to clarify that both parties have agreed to the contents of the agreement.
– The consent to the registration of the applied-for trademark by the proprietor of the earlier registered trademark.
– Mutual confirmation of the current use of both trademarks
– An agreement between the parties to the effect that the circumstances (current use) will not be changed in the future.
(ii) Opinion
A reasonable explanation to clarify in what sense the agreement will reduce the likelihood of confusion. (Examples of written agreements and written opinions will be provided in the Examination Handbook.)
(2) Submission of documents confirming the specific use of both trademarks
A written statement confirming the specific use of both trademarks shall be submitted. Specifically,
(i) Structure of the trademarks
(e.g.: the figure and letters are always used in unison, the color and typeface are fixed, etc.)
(ii) Method of use of the trademark
(e.g.: both trademarks are accompanied by a house mark or a strike-through indication, the trademark is used only in a specific position on the packaging of the goods, etc.)
(iii) Goods, etc. in which the trademark is used
(iv) Method of sale and provision
(e.g.: Selling only in person, selling only by order production through individual sales, etc.)
(v) Season of sale/provision
(vi) Area of sale/provision, etc.
However, not all of the items (1) to (6) are required. Appropriate items to be selected according to the trademark, products, etc.
6. Public notice
(1) Trademark Gazette and International Trademark Gazette
It will be possible to confirm that the trademark was registered through the consent system.
(2) J-PlatPat (Patent Information Platform)
1) It will be possible to search for trademarks registered under the consent system.
2) Inquiry of documents to be submitted under the consent system In principle, it is possible to inquire about documents to be submitted under the consent system. However, in cases where a part of a written opinion, etc. is hidden from view or submitted as a procedural supplement, etc., the said part or the said documents cannot be inquired.
7. Unfair Competition Prevention Act
With respect to a trademark registered under the consent system, the act of using the registered trademark without an unfair purpose is not treated as unfair competition (Article 19 (1) (iii) of the Unfair Competition Prevention Act.
The Unfair Competition Prevention Act also takes into consideration the fact that the owner of a trademark that has become well-known and famous may not demand an injunction or claim damages against the other trademark owner (Article 19 (1) (iii) of the Unfair Competition Law). In addition, since the coexistence of similar trademarks infringes or is likely to infringe business interests, the trademark right holder may demand that the other party affix an anti-confusion mark (Article 19(2)(ii) of the Unfair Competition Law).