Article 4(1)(xi) of the Japanese Trademark Law provides that a trademark that is identical or similar to a previously registered trademark of another applicant and that has the same or similar designated goods or designated services shall not be registered.
If your trademark application violates this provision, the JPO(Japn Patent Office) will notify you of the reasons for refusal for violation of Article 4(1)(xi) of the Trademark Law.
A notice of reasons for refusal does not mean that the trademark is immediately refused registration.
Appropriate action can lead to registration of the trademark application.
Below is an explanation of how to resolve reasons for refusal under Article 4(1)(xi) of the Trademark Law.
※This article is a translation of a blog post written in Japanese by the same trademark attorney.
Amendment
An amendment is made to delete or reduce the same designated goods or designated services as those of the earlier filed trademark. This will eliminate the reason for refusal.
The notice of reasons for refusal contains examples of how to make such amendments, so it is a good idea to follow the examples.
However, it should be noted that the examples may not always be appropriate.
Please note that if a reason for refusal other than Article 4(1)(xi) of the Trademark Law is notified at the same time, the reason for refusal may remain even if a deletion amendment is made.
Opinion Letter
If you think that you are not satisfied with what is written in the notice of reasons for refusal, you can submit a written opinion and argue that the earlier registered trademark and this application are not similar. If this argument is accepted, the reason for refusal will be resolved.
In addition to the claim of dissimilarity, the applicant can also claim that the reasons for refusal have been eliminated by the above-mentioned amendment.
Trial for cancellation of non-use
If the earlier registered trademark in the notice of reasons for refusal is not in use, a request for a trial for cancellation of non-use may be filed to have it extinguished. Please note, however, that a request for a trial costs money and is not guaranteed to be successful.
Negotiation
Negotiate with the first applicant to assign its trademark rights (if the trademark rights are assigned, the trademark applicant and the first applicant become one and the same person, thus eliminating the reasons for refusal), or obtain a written consent from the first applicant.
The letter of consent is a written agreement from the first applicant that it is acceptable to register a trademark application that is similar to his/her own trademark right.
However, if the trademark examiner determines that there is a likelihood of confusion, the reason for refusal under Article 4.1(11) of the Trademark Law will not be resolved even if you receive a letter of consent.
In addition, some trademark owners will respond almost free of charge, while others will ask for high consideration.
Basically, the Japanese are all good trademark owners, but there are rare trademark owners who demand a high price.
Conclusion
By taking the above measures, reasons for refusal can be eliminated. However, if you make too many amendments by mistake or fail to provide appropriate opinions, the decision of refusal will be issued. Therefore, you should always seek an expert opinion.
Please contact us regarding trademark registration in Japan.