Background
Before the introduction of the consent system, a trademark could not be registered under the Japanese Trademark Law if it was identical or confusingly similar to a previously registered trademark and the trademark application covered designated goods/services overlapping with those covered by the prior trademark registration. One problem with this system was that a trademark could not be registered even if no likelihood of confusion existed between the two marks in the actual market.
Most countries have "consent systems" to allow concurrent registration of a trademark that is identical or similar to a previously registered trademark with the consent of the owner of the previously registered trademark. Japan resisted introducing a system of this kind due to the perceived risk that consumers could be confused as to the origin of goods or services with similar trademarks.
Japan's consent system
Under the amended Trademark Law, registration of a new trademark is allowed even where an identical or similar previously registered trademark exists if the trademark applicant submits a letter of consent obtained from the previously registered trademark owner and documents proving that no likelihood of confusion exists between the previously registered trademark and the applied-for trademark. Upon submission of these documents to the Japan Patent Office (JPO), a JPO examiner will determine whether a likelihood of confusion exists after evaluating the specific circumstances of both marks.
Applicants can submit the following documents to the JPO as evidence that no likelihood of confusion exists.
- Agreement between the parties:
Applicants may submit a copy of an agreement between a previously registered trademark owner and the applicant. It is essential that such an agreement include a description of the specific circumstances and agreed conditions concerning both marks. Additionally, it is important to verify that an agreement actually exists between the applicant and the owner of the previously registered trademark. A summary of the agreement can be submitted.
- Documents proving that no likelihood of confusion will exist in the future
Under the new examination guidelines, it is also necessary for applicants to prove that no likelihood of confusion will exist in the future. If no likelihood of confusion currently exists and objective evidence suggests that the specific circumstances are unlikely to change, it can be inferred that no likelihood of confusion will exist in the future. A low likelihood of changes in the circumstances can be substantiated with materials related to the business activities of both the applicant and the previously registered trademark owner. Examples of such materials include published company brochures, evidence of the use of both trademarks (e.g., advertisements, newspaper and magazine articles), documents regarding future business plans (e.g., published company press releases) and materials demonstrating the absence of confusion at present (e.g., surveys targeting dealers and consumers).
For trademarks registered under the new consent system, the following provisions are intended to prevent confusion after registration.
- If the use of a trademark by one trademark right holder could harm the business interests of another trademark right holder, the affected right holder may request that the other right holder use an appropriate indication on its goods or services to prevent confusion between the two marks (Article 24-4, items 1 and 2).
- If one trademark right holder uses a mark in a manner that causes confusion with goods or services related to the business of another trademark right holder, and this usage is deemed to constitute unfair competition, any party may file a cancellation action ("trial for cancellation of unfair use") to cancel the trademark registration (Article 52-2, paragraph 1).
Reference websites (hosted by the Japanese-language Japan Patent Office website):
