Key Changes in Japanese IP Law, Act, and Practice: Design and Trademark

April 2024
Practice Area

i. A consent letter system is introduced (effective April 1, 2024)

The Revised Trademark Act, which includes a consent letter system, came into effect on April 1, 2024. If an applied-for trademark is identical or similar to an earlier registered trademark and its designated goods or services are identical or similar to the goods or services designated in the prior mark, the application is to be rejected.

The applicant may submit a letter of consent from the holder of the earlier registered trademark and other information. If such a letter is submitted, the Examiner judges the likelihood of confusion when considering the letter. If the Examiner judges there is no likelihood of confusion, the rejection is overturned. If the Examiner judges that there is a likelihood of confusion, the rejection is not overturned despite the letter.

If a trademark is registered with a consent letter but the use by one of the parties (Party A) could damage the business interests of the other party (Party B), Party B may request Party A to use an appropriate indication to prevent confusion. If Party A or B uses its trademark for unfair competition and confusion occurs, anyone can file a request to cancel the trademark registration.

The system for requesting an indication to prevent confusion and cancelation also applies to trademarks registered with temporary assignments.

ⅱ. Requirements concerning the registration of trademarks containing another person’s name are relaxed (effective April 1, 2024)

Previously, if an applied-for trademark contained the name of another person(s) (first and last), the applicant had to obtain the consent of the person(s) with the same name. Obtaining their consent, however, was often logistically impossible because if the Examiner found anyone with the same name as the one contained in the applied-for trademark, they would issue an Office Action requesting the submission of consent from ALL persons with that name. For example, the applicant for a trademark containing “John Smith” would have to obtain the consent of all John Smiths.

The Revised Trademark Act (effective April 1, 2024) allows the applied-for trademark to be registered without the consent of the person(s) if: 1) their name is not well-known in the goods/services field for which the mark is to be used, or 2) a) there is a significant relationship between the person’s name and the applicant, and b) the applicant does not intend to register the trademark for fraudulent purposes. This amendment was made in response to the many complaints from trademark owners, particularly those in the fashion design industry, in which designers’ names are commonly used as trademarks.

ⅲ. The design grace period (exception for the lack of novelty) requirements are relaxed (effective January 1, 2024)

The Design Act provides for a grace period for design applications when a design has already been publicly disclosed and has lost novelty. To benefit from the grace period, the applicant must make a request at the same time as filing the application and submit a “Certificate of Exception to Lack of Novelty” (hereafter a “Certificate”) accompanied with evidence of the disclosure. Because the JPO previously required that a Certificate and evidence for each disclosure be submitted within 30 days of the filing date in Japan, it was often difficult for applicants to prepare and submit Certificates and evidence for all disclosures.

To alleviate the burden on design applicants, the revised Design Act (effective January 1, 2024) only requires the submission of a Certificate and evidence for the first disclosure when two or more disclosures occur. Moreover, if more than two disclosures occur on one day and further disclosures occur at a later date, it is only necessary to submit a Certificate and evidence for either one of the disclosures that occurred on the earliest date.

The applied-for design must be either identical or “similar to” the disclosed design to enjoy the grace period. Where two or more designs have been disclosed, the applicant should consider submitting a Certificate and evidence for each design because a judgment regarding design similarities can differ from one Examiner to another. If the Examiner considers that the applied-for design is dissimilar to one of the disclosed designs for which no Certificate and evidence are submitted, the dissimilar design will not be cited as a novelty-destroying prior art but might still be cited as an inventive-step-destroying prior art.