In major countries such as the U.S., China, and Taiwan, when a trademark application is filed that is similar to another previously registered trademark, it is possible to use the “Consent System”, which is introduced by law or examination standards, to seek trademark registration.
In contrast, the Consent System will not be introduced in Japan until the end of March 2024, and the method of “assignment back (assign-back),” in which the applicant’s name is matched with that of the earlier registered trademark applicant through a temporary transfer registration, is currently used instead. The assignment back system caused disadvantages in rights acquisition such as the large burden of negotiations, procedures, and costs.
With the revised Trademark Law of April 1, 2024, it will finally be possible to obtain trademark rights using the Consent System in Japan. Use of the Consent System will be available for trademark registration applications whose “filing date” is on or after the effective date of the revised law.
The Consent System to be introduced under the revised law is the so-called “reserved type” (*), similar to the system that has been adopted in the U.S., China, Taiwan, and other countries. Even with the consent of the prior trademark owner, if there is still a “likelihood of confusion as to the origin” of the two trademarks, registration will not be granted.
For this reason, when requesting the use of the Consent System, the applicant must submit the following documents: “a document proving that there is no likelihood of confusion between the two trademarks” as well as “the consent of the prior registered trademark owner”.
(*The “full” Consent System as opposed to the reserved system is a system where registration is granted without further examination with the consent of the prior trademark owner.)
Takaoka IP is dedicated to helping you navigate the intricacies of the Japanese patent and trademark system. Our recommendations are strictly aligned with the latest Japanese laws, regulations and standards, and we can help you to develop customized strategies that meet your unique needs for the most effective rights acquisition .
