Introduction of Letters of Consent
If an applied-for trademark is identical with or similar to prior marks and designates goods/services identical with or similar to goods/services designated in the prior marks, the applied-for trademark will be rejected. Because letters of consent were not acceptable to the Japan Patent Office (JPO), temporary assignments have been used for overcoming rejections due to prior marks. Finally, letters of consent are introduced. In order for the letters of consent to be accepted, the following requirements must be fulfilled:
- an applicant obtains consent to registration of the applied-for mark from the owner of a prior mark; and
- there is no likelihood of confusion between the applied-for mark and the prior mark.
Please note that it is not sufficient to submit a letter of consent. It is required to convince the examiners that there is no likelihood of confusion.
Applicants must submit the following documents to the JPO if they wish to apply for the consent system.
- A letter of consent (written consent form executed by the owner of a prior mark)
- Documents (explanations) to assure the examiners that there will be no likelihood of confusion between the marks
In the examination, likelihood of confusion will be specifically examined in consideration of explanations submitted together with a letter of consent. There must not be likelihood of confusion not only at the time of issuance of a Decision of Registration, but also in the future. The likelihood is judged based on, for example, similarity of the marks, how well the marks are known to consumers, etc.
If a mark is registered by means of a letter of consent, and the use by one (Party A) of the parties can damage the business interest of the other party (Party B), Party B may request Party A to affix an appropriate indication to the mark for preventing any confusion between the goods/services pertaining to the business of Party B and those of Party A. Moreover, if Party A or Party B uses its own mark for purpose of unfair competition and confusion actually occurs, anyone can file a request for cancelling the trademark registration.
The revision applies to Japanese trademark applications which are filed with the Japan Patent Office (JPO) on or after April 1, 2024. Japanese applications claiming priority from an application filed in another country before April 2024 can enjoy the system of letters of consent, as long as the Japanese application is filed on or after April 1, 2024. International applications for trademark registration (based on Madrid Protocol) can also enjoy this system as long as the date of international registration or the date of subsequent designation is on or after April 1, 2024.