When trademark applicants receive a refusal of their trademark applications due to a conflict with a prior similar registered mark cited by the JPO examiner, how can the applicants overcome the refusal?
In some jurisdictions, it has become a routine to submit a letter of consent (LOC) issued in the name of the owner of the cited mark agreeing on the use and registration of the applied mark for the purpose of overcoming the refusal, apart from arguing against the similarities between the respective marks.
However, the Japan Patent Office (JPO) is negative to withdraw refusals arising from a conflict with a senior registered mark under Article 4(1)(xi) of the Trademark Law simply by means of LOC.
Trademark Examination Guideline (TEG) 42.111.03 in relation to Article 4(1)(xi) provides special conditions where the JPO accepts LOC and withdraws refusals as follows.
Where an applicant claims that he/she is in any of the relationships (1) and (2) with the owner of a cited trademark right and submits evidence (3), the case shall be handled as if Article 4(1)(xi) does not apply.
(1) The owner of a cited trademark right is under the control of the applicant.
(2) The applicant is under the control of the owner of a cited trademark right.
(3) Evidence to the effect that the owner of a cited trademark right agrees that the trademark as applied is to be registered.
Condition (1) and (2) – “Under the control” relation between cited owner and applicant will be satisfied if:
(a) Business of the owner of a cited trademark right of which the majority of voting rights of all shareholders are owned by the applicant;
(b) Business of the owner of a cited trademark right which has a capital alliance with the applicant and whose corporate activities are substantially under the control of the applicant, although the requirement specified in (a) above is not satisfied.
Therefore, LOC is useful only where either party has a controlling interest in the other entity, the so-called parent-child relationship between companies.
Due to the restriction, LOC would not be available in most cases to overcome the refusal based on Article 4(1)(xi).
Under the circumstance, practically, we are able to select three options.
- Arguing dissimilarity of mark or goods/ services
- Filing a non-use cancellation against the cited mark
- Transferring an applied mark to an owner of the cited mark and assigning it back after registration, vice versa.