Introduction of the Consent System
In accordance with the Partial Revision of the Unfair Competition Prevention Act, etc., promulgated on June 14, 2023, the provisions relating to the consent system of the revised Trademark Act came into effect on April 1, 2024.
Background
Article 4(1)(xi) of the Trademark Law stipulates that a trademark application may not be granted for a trademark identical or similar to a registered trademark of another person (hereinafter prior registered trademark) for identical or similar goods/services as the designated goods/services of the prior registered trademark.
In Japan, the consent system has not been allowed on the grounds that an agreement between the concerned parties alone cannot eliminate the risk of consumers being misled or confusing the source of goods and services between a prior registered trademark and a subsequent trademark.
In recent years, the increasing need for the introduction of a consent system in order to expand the range of brand choices and for new businesses to make use of the intellectual property of small and medium-sized enterprises and start-ups, as well as to promote harmonization of international systems, led to this revision.
Overview of this Revision
(1) Examination
The newly added paragraph 4 of Article 4 of the Trademark Law stipulates that, a trademark falling under Article 4(1)(xi) can still be registered if the prior trademark owner's consent has been obtained and there is no risk of confusion between a prior registered trademark and a subsequent trademark (hereinafter the two trademarks).
With the abovementioned addition, Article 8, which provides for competing trademark applications, has also been revised to allow the use of the consent system even when competing applications are filed on the same day.
In case of using the consent system, the applicant is required to submit the letter of consent and documents proving that there is no likelihood of confusion between the two trademarks. Regardless of the letter of consent being obtained, the application may not be granted if the JPO judges that there is still likelihood of confusion between the two trademarks.
The consent system only applies to applications and international registrations filed on or after April 1, 2024. Applications filed by March 31, 2024, do not benefit of the consent system.
(2) After registration
With regard to the consent system, the following provisions have been amended to clearly include the case where an application is registered through the consent system in order to ensure that post-registration likelihood of confusion is prevented:
● Where the use of a trademark by a right holder is likely to harm the business interests of another right holder, the right holder may request that an appropriate indication be affixed when the trademark is used in order to prevent confusion between the two trademarks.
(Confusion-preventing indication request) (Article 24(4)(i) and (ii))
● Where a right holder uses a trademark in a manner that causes confusion with the goods or services pertaining to the business of another right holder for the purpose of unfair competition, any entity may request a cancellation trial of the trademark registration.
(Trademark cancellation trial for unfair use) (Article 52(2)(i))
Jumpei SARUYAMA,
Patent Attorney (Trademarks, Designs)