タグ: New Trademark Law

Can a ‘Letter of Consent’ guarantee successful trademark registration in Japan?

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The revised Japan Trademark Law will come into effect on April 1, 2024, introducing the “Letter of Consent” as a means to overcome conflicts with earlier trademark registrations.

However, the Japan Patent Office (JPO) recently announced that evidence must be provided in addition to a consent letter obtained from the earlier registrant when applying Article 4(4) of the Japan Trademark Law. This evidence must convince the JPO examiner that there is no likelihood of confusion between earlier and junior marks, not only at present but also in the future.

Article 4(4) of the Japan Trademark Law, which is newly introduced in April, states:

Trademark applications will not be rejected under Article 4(1)(xi) as long as the applicant obtains consent from the owner of the cited mark and it is unlikely to cause confusion with the cited owner or its exclusive or non-exclusive licensee when used on goods or services designated under the application.

Trademark examination guidelines for Article 4(4) provides:

  1. The requirement of being ‘unlikely to cause confusion’ must be satisfied not only at the time of the JPO examiner’s decision, but also in the future.
  2. To satisfy the requirement, the following factors will be assessed:
    • Similarity between marks
    • Recognition of mark
    • Uniqueness of mark
    • Significance of mark (House mark or product brand)
    • Possibility of business expansion
    • Relatedness of goods and service
    • Consumers
    • Trade practices involving actual use of mark
  3. Where both marks are identical and used on same goods and service, the examiner will find “likely to cause confusion” in principle.
  4. Applicant will be required to provide evidence to demonstrate unlikelihood of confusion based on actual use of both marks. For instance,
    • Different color, font or combination between literal element and figurative element of respective mark
    • Different position to place the mark or to accompany with other distinctive mark
    • Difference in speific purpose or price of respective goods
    • Different sales channel
    • Different seasons to use the mark
    • Different territory to use the mark
    • Mutual covenants to take necessary actions if confusion is likely to occur between the marks
  5. An agreement between the parties not to change the present use or configuration of both marks in the future will be required to strengthen the unlikelihood of confusion in the future.

It is important to note that “letter of consent” is not available to trademark applications filed with the JPO before April 1, 2024, even if they are pending examination.

Similarly, international registrations that were registered at the WIPO or subsequently designated to Japan before April 1, 2024, can’t make use of the consent.

Japan: Trademark Law Revision Act promulgated on June 14, 2023

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The Japan Trademark Law Revision Act of 2023 (Act No. 51) passed Congress on June 7 and was promulgated on June 14. Hot topics of the revision are:

1. An individual can register his/her name as a trademark to the extent that it has acquired a substantial degree of recognition among relevant consumers of the designated goods or services

Current law provides that the name of a person is unregistrable if there is another person of the same name unless obtaining his/her consent (Article 4(1)(viii)).

Current – Article 4(1)(viii)

Trademark shall not be registered if the mark contains the portrait of another person, or the name, famous pseudonym, professional name, or pen name of another person, or famous abbreviation thereof (except those the registration of which has been approved by the person concerned)

By virtue of the revision, in the event that the name of a person has been widely recognized as a source indicator of his/her business, the individual can register his/her name without the consent of another person of the same name.

Revision – Article 4(1)(viii)

Trademark shall not be registered if the mark contains the portrait of another person, or the full name of another person (limited to that has been widely recognized as a result of actual use on goods or services of the person’s business), the name, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof (except those the registration of which has been approved by the person concerned), or the name of another person that would not meet with requirements specified by government ordinance.

It should note above revision does not apply to the name of a company (legal entity). A company can’t register its name without the consent of another company of the same name if exists.

 2. A mark can be registered even if it is subject to Article 4(1)(xi) which prohibits registration of any mark identical or similar to earlier trademark registration, on the condition that the earlier trademark owner gives consent and there is no likelihood of confusion with the earlier mark as a matter of fact.

For long years, the JPO has not considered, in the course of trademark examination, consent from earlier trademark owners as a pass to open the gate for registration.

Due to a rigid examination practice, the applicant and earlier trademark owner, regardless of mutual agreement to give consent to trademark registration in Japan and other jurisdictions, were all the way obliged to temporally transfer their trademark right to either party and then take action to assign it back after the JPO granted registration of the applied mark.

By virtue of the revision, the applicant can overcome the refusal based on a conflict with earlier trademark registration in Japan by filing a letter of consent from the earlier trademark owner and the JPO examiner believes the co-existence of both marks would not cause confusion.

New – Article 4(4)

Trademark shall not be rejected under Article 4(1)(xi) provided that the applicant obtains consent from the owner of the cited mark under the article and it is unlikely to cause confusion with the cited owner and its exclusive or non-exclusive licensee when used on goods or services designated under the application.

It should note the JPO still has the discretion to reject or cancel trademark registration even after the filing of a letter of consent where they find a likelihood of confusion or actual confusion (Article 52-2).

When does the revised act come into force?

The revised act is set to become effective from April 1, 2024.

Japan: Trademark Law Revision Act promulgated on May 21, 2021

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The Japan Trademark Law Revision Act of 2021 (Act No. 42) passing congress on May 14, 2021, was promulgated on May 21.

Hot topics of trademark-related revision are:

1. On-line oral hearing

Under the current law, the Japan Patent Office (JPO) has no choice but to hold an oral hearing for administrative proceedings only when the parties are physically present in the oral proceedings. The revised act enables the JPO to hold oral proceedings by video conference.

2. Notifications by email

Under the current law, trademark applicant via the Madrid Protocol gets to know the status of registration only by means of receiving written notification from the JPO. The revised act allows the JPO to electronically send registration notifications to the applicant via the International Bureau by email.

3. Customs enforcement

In view of an increasing number of counterfeits imported for private use, the revised act restricts the counterfeits that were exported from a foreign country via postal mail by a business entity even if purchased by a private person in Japan and constitute trademark infringement at the time when they enter the territory of Japan.

4. Payment of second official fee for registration via the Madrid Protocol

Article 68-30 of the revised act looks attractive to Madrid users indeed. The Madrid users are no longer required to pay a second official fee to the JPO in order to accomplish trademark registration in Japan.

5. Fee increase

The revised act increases official fees for trademarks by more than 10%. Details will be decided by the JPO.

Official feeExistingRevised act
Filing feeJPY28,200/classLess than JPY32,900/class (17% increase)
Registration feeJPY38,800/classLess than JPY43,60/class (12% increase)

When does the revised act come into force?

The revised act is set to become effective within a year from the promulgation date.

Japan: Trademark Law Revision Act of 2018 in force on June 9

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The Japan Trademark Law Revision Act of 2018 (Act No. 33) passing congress on May 23, 2018, was promulgated on May 30 and becomes effective on June 9, 2018.

Revision act sets a high bar for requisite in dividing a trademark application under Article 10 (1) of the Trademark Law.

 

Article 10(1) of the Trademark Law – Dividing TM application

Dividing trademark application is beneficial to applicant who wants to maintain a prior-application right for every goods/services designated under initial application because division admits divided application to have retroactive effect as if it was filed on the same date with initial application.

Currently, applicant is allowed to divide trademark application as long as the application satisfies following requirements.

  1. Initial application is pending in examination, appeal, or re-examination (Parent application),
  2. Junior application (Child application) relates to the identical mark with Parent application,
  3. Child application designates goods/services within the scope of goods/services originally designated by Parent application, and
  4. Parent application deletes the divided goods/services from designation simultaneously at the time of filing Child application.

For your reference, old Article 10(1) provided that:

“An applicant for trademark registration may file one or more new applications with regard to part of an application which designates two or more goods or services as its designated goods or designated services, provided that the application for trademark registration is pending in examination, trial examination or retrial examination, or that a suit against a trial decision to refuse the application is pending in court.”

 

Additional requirement for divisional application

From June 9, 2018, in addition to the above, applicant is required to pay an official fee of Parent application.

Where applicant divides trademark application without paying official fee imposed on Parent application, the Japan Patent Office (JPO) does not allow retroactive effect to Child application. Namely, Child application is examined for registrability based on its actual filing date.

JPO decided to revise the article to prevent an entity with fraudulent intent from repeatedly dividing trademark application regardless of non-payment of official fee.