Implementation of a new system for trademarks in Japan

In 2024, Japan will see the launch of a new system, “Letter of Consent” (hereinafter referred to as the “Consent System”) for trademarks. We will provide an in-depth explanation of this system. The Consent System in Japan will come into effect on April 1, 2024.

In various foreign countries and regions, the coexistence of subsequent trademarks is permitted through a Consent System (i.e., Letter of Consent), even if the trademark is identical or similar to a prior registered trademark, provided that the holder of the prior registered trademark gives consent. However, under the current Trademark Act in Japan, it is not allowed to register an application if a trademark is identical or similar to another person’s registered trademark, etc. (Japan Trademark Act, Article 4 (1) (xi)). Therefore, in Japan, as an alternative to the Consent System, an “assign-back agreement” is implemented where the applicant transfers their trademark application to the holder of the relevant trademark rights, and after registration, the trademark rights are transferred back to the original applicant.

Under the revised Article 4 of the Trademark Act, which introduced a new Paragraph 4, starting from April 1, 2024, even for trademarks falling under Article 4(1)(xi) of the same article, registration will be allowed if the consent of the prior registered trademark holder has been obtained and there is no risk of confusion between the prior registered trademark and the applied trademark.

During the examination process, to register a trademark that is identical or similar to a prior registered trademark, the applicant is required to submit a written consent from the holders of the prior registered trademark, along with a document demonstrating that there is no risk of confusion between the two trademarks.

Since Article 8 of the Trademark Act has been amended in conjunction with the introduction of Article 4 (4), the Consent System can be utilized even when there are two or more trademark registration applications filed on the same day.

Please be advised that the Consent System will not apply to a trademark application which were filed before the effective date, April 1, 2024. Therefore, if an application is pending examination after the effective date, it is not allowed to use the Consent System. In addition, the Consent System will not apply to a divisional application that is based on an original application filed before the effective date, even if the divisional application is filed after the effective date.

On the other hand, the Consent System will apply if priority under the Paris Convention, is claimed after the effective date based on a first-country application filed before the effective date. However, please note that the Consent System will not automatically apply to a trademark registered under the letter of consent in a foreign country.

Regarding an international application for trademark registration designating Japan, the Consent System will apply to it if the date of international registration or the date of subsequent designation falls on or after the effective date. Generally, the documents showing the consent from the prior registered trademark holders will be required to be submitted in response to a Notification of Provisional Refusal under Article 4(1)(xi). However, it is possible to submit the documents to the Consent System before the Notification of Provisional Refusal.

After registration, to prevent confusion for the coexisting trademarks under the Consent System, the following provisions have been added:

(1) When there is a risk that the interests of one rights holder may be harmed by the use of another rights holder’s trademark, a request for an appropriate indication to prevent confusion between both trademarks can be made (Article 24-4 (1) (ii)).

(2) If one rights holder uses a trademark in a manner that causes confusion with the goods or services related to the business of another rights holder for the purpose of unfair competition, anyone can request a trial to cancel the trademark registration (“Trial for Cancellation of Registered trademark with Unfair Use”) (Article 52-2 (1)).

Finally, the Japan Patent Office has announced that trademarks registered under the Consent System will be searchable on the information platform ‘J-PlatPat’ and can be confirmed in the Trademark Gazette.