Good news! In Japan, a new system called “consent” has been implemented in 2024.
Please note: All applications for trademark registration filed before April 1.2024, will not be subject to the consent system even if examination is pending on or after April 1.2024.
One of the most common reasons for refusal of an application for trademark registration is Article 4(1)(xi), which cites a previously registered trademark of another. Generally, the following methods were used to resolve such reasons for refusal.
(1) Amendment: delete the conflicting designated goods.
(2) Written opinion: claiming the dissimilarity of the trademark.
(3) Request for a trial.(Effective but expensive)
(4) Assignment back.(Assignment back procedure is complicated,expensive, and since overseas residents are not familiar with it and have to bear the burden of explanation by the Japanese representative, the introduction of a consent system has been sought from the viewpoint of international cooperation and user-friendliness.
Although this system appears to be working well, there are some flaws. In the examination process, it is confirmed that there is no risk of source confusion. Even with the consent of the proprietor of the prior registered trademark, if there is still a likelihood of confusion of origin, the registration will be denied as a conditionally acceptable consent.
After registration, the interests of consumers are protected by cancellation trials.
Since this system is still new, we cannot say for certain what documents will pass the examination process in JPO.
However, there are a few things that can be said. For example, a trademark is more likely to be rejected if the company is diversified. The degree to which a trademark is well known also affects the examination process. The real status of business in the sector where the trademark is utilized deserves special consideration. We draft legal agreements with special attention to this.
Contact Japanese trademark attorney now!