As of April 1, 2024, a portion of the Japanese Trademark Act has been revised, and we therefore wish to provide the following information.

1. Introduction of Letters of Consent (Reserved Consent System)
Under the Trademark Act, if an application for a trademark registration is made for another person's registered trademark (hereinafter referred to as a "prior registered mark") or a trademark that is similar thereto, for identical or similar designated goods or designated services, in principle, a trademark registration cannot be granted (Article 4(1)(xi) of the Trademark Act).
While many foreign countries and regions have adopted a system that allows trademark co-existence, even if there is a prior registered mark, if there is an agreement for co-existence by the owner of the prior registered mark, in Japan, the introduction of such system has been postponed for reasons such as the inability to eliminate the risk of misunderstanding or likelihood of confusion as to the source of goods or services by merely reaching an agreement between the parties concerned.
However, from the standpoints of the need to increase the possibility of expanding the range of brand selection and international harmonization of systems, letters of consent have been introduced in the present revision to the law. In this regard, a so-called "reserved consent system" has been adopted in which a registration will not be granted if there is a likelihood of confusion as to the source of goods or services, even if there is consent by the owner of the prior registered mark.
According to the present revision, registration will be allowed, even for a trademark that falls under Article 4(1)(xi) of the Trademark Act, if consent of the owner of the prior registered mark has been obtained and if there is no likelihood of confusion between the prior registered mark and the trademark of the latter-filed application (hereinafter referred to as "the two trademarks"). Whether or not there is likelihood of confusion will be determined by comprehensively considering the specific circumstances surrounding the two trademarks, such as the degree of similarity between the two trademarks, the manner of use of the two trademarks, and other actual business circumstances. Such specific circumstances to be considered include the degree of familiarity and the degree of distinctiveness of the trademark (whether the trademark is composed of a coined word and whether it has notable features in its composition), whether the trademark is a house mark, the possibility of diversified operation in the company and the like.
In the event that confusion arises from the co-existence of the two trademarks as to the source of goods or services after registration, it is possible for the owner of the prior registered mark to request for anti-confusion labeling or to request a Trial for Cancellation due to Unauthorized Use.

2. Relaxation of Registration Requirements for Trademarks that Include Another Person's Name
Previously, if a trademark included another person's name in its composition, it could not be granted a trademark registration unless the consent of all other persons having the same surname and same given name was obtained, regardless of the degree of name recognition of the trademark pertaining to the application or the other person's name.  The present revision was made in response to strong demand from the fashion industry and the like, in which the names of founders, designers, and the like are often used for brand names, since the existence of other persons having the same surname and same given name would compel uniform rejection of all such applications, even for widely and generally known brands.
According to the present revision, a trademark that includes another person's name can be granted a trademark registration without the consent of the other person, provided that the trademark application satisfies the following requirements.

• There is no other person having the name who has a certain degree of name recognition in the field of goods or services in which the trademark is used.
• There is a considerable relationship between the name included in the composition of the trademark and the trademark registration applicant.
  Specific examples of a considerable relationship: the applicant's own name and the name of a founder or a representative
• There is no unfair purpose in obtaining the trademark registration.

 
※ If there is another person having the name who has a certain degree of name recognition, the consent of that other person is required.
※ "Another person" refers to an existing person other than the person himself/herself and includes not only natural persons (including foreign persons) and corporations, but also associations without rights.
 
If you have any questions or require further information, please feel free to contact our Design and Trademark Department.

 
Summary prepared by Design & Trademark Section
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