竹内国際知財事務所 TAKEUCHI IP Office

President

Kozo Takeuchi

・Patent and Trademark Attorney

・Additional Information on Specific Infringement Litigation Representation

・Former Visiting Professor, Osaka University Law School

・Senior Vice President, Asian Patent Attorneys Association

Deputy President

Hirokazu Matsumoto

・Patent and Trademark Attorney

Business field

Our office focuses on trademarks and designs, and specializes in the registration and protection of so-called signs and designs under the Copyright and Unfair Competition Prevention Law.
We have a network in about 180 countries in Japan and abroad,and we are engaged in intellectual property business by making use of more than 30 years of experience in investigation, application, infringement countermeasures, contracts, appraisals, etc.

Takeuchi IP News

March 25, 2024

Letters of Consent (LOC) Get Accepted in Japan
Will the Notorious Assign-Back be Gone or Go Underground?


Effective April 1, 2024, if your new* trademark application in Japan encounters objections based on prior identical or similar marks, you will no longer have to abandon it or go through that tricky process of Assign-Back as dubbed in Japanglish. This was made possible by recent amendments to our Trademark Act and will expand the range of possible measures to be taken where there are identical or similar marks in use, which you believe can coexist with yours in the market.


* Letters of Consent can only be accepted for your Japanese applications to be filed on or after April 1, 2024 or Japanese designations of international applications/registrations made thereafter under the Madrid System.


It is pertinent to note that Letters of Consent from the owners of prior marks are a necessary but not a sufficient condition for JPO examiners to grant coexistence of later marks in the Trademarks Register. In addition to the consent requirement, the newly added Section 4(4) of the Trademark Act requires that there be no likelihood of confusion between the goods/services for which the prior marks are registered and those for which the later mark is to be used**.


** This second requirement of “no likelihood of confusion” can be legally contentious, because the Japanese courts have consistently equated similarity with confusion. The only notable exception to this rule was dissimilar but confusing trademarks applicable under Section 4(1)(xv) of the Trademark Act.


According to the Examination Guidelines for Trademarks as revised in February 2024, in globally determining whether the non-confusion requirement has been met, the Examiner shall take into account the following facts and issues:


  i) How similar is the later mark to the prior mark?
  ii) How well-known is the prior mark?
  iii) Does either of the marks include an invented word or
    a salient feature in composition?
  iv) Is either of the marks a house mark?
  v) How diversified is the business of either party?
  vi) How are the goods/services of either party related?
  vii) How are the consumers of either party’s goods/services,
    common in scope?
 viii) How are or will the marks be used in trade; how are or
    will the goods/services be marketed?

Once your trademark application receives a relative-ground objection that is hard to overcome by way of arguments or by cancelling the registration of each cited prior mark for any reason, you can enter negotiations with the owner of the cited mark for a Letter of Consent or a more comprehensive coexistence agreement. In a case where marks are identical and used for identical goods or services, however, such an agreement between the parties would certainly not negate a likelihood of confusion.


In order to ensure that no likelihood of confusion will be confirmed by the Examiner, it will be essential to feed business-side information, i.e. facts on the ground, to the Examiner with regard to Items v) to viii). Such information is not limited to differences between both parties’ goods/services or in target consumers but should include a) how the applied-for mark is used in a reliably consistent way, b) how it is always shown vis-à-vis your company name or logo, c) how it is positioned in the product packages and d) whether it is accompanied by a disclaimer or other qualifying language to communicate to consumers that the goods/services should be distinguished from others in the market.


As implied in Item viii) above, the likelihood of confusion to be determined during examination concerns the situation not just in the present but in the future. This is where the specific terms and conditions of the LOC or coexistence agreement kick in, in particular those binding terms relating to measures to prevent confusion through mutual consultation. In this regard, any effective confusion preventive and relief measures, if set forth in the LOC or coexistence agreement in both general and specific terms, should work greatly in persuading the Examiner of “no likelihood of confusion” in the future.


Our hope is that JPO examiners will not impose the no-likelihood-of-confusion requirement too strictly; otherwise, the “Assign-Back” practice where the ownership of your important trademark goes back and forth between the consenting parties may well persist.



If you have any questions about this article or our services, please contact me at suzuki@takeip.jp or our trademark team at trademark@takeip.jp.



Yasuhiro Suzuki
Japanese Patent & Trademark Attorney
Takeuchi IP Office, P.C.