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Possible Reform of Japanese Trademark System

2023.01

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Currently, the Japanese Trademark Office (JPO) is considering the following revisions of requirements for trademark registration.

1.Easing of requirements for registration of a mark containing another person’s full name

Background
In Japan, for the purpose of preserving moral interests concerning a person’s full name, an application for the mark containing another person’s full name is rejected by the JPO’s examiner unless the applicant obtains a consent for registration of the mark from the said person according to Article 4 (1) (viii) of the Japanese Trademark Law. In case that several persons including a legal entity share the full name contained in the mark in common, the applicant needs to obtain consents for the registration from all of them. Sometimes, such requirements will become a big hurdle to register the mark since it is not easy to obtain consents for the registration from all persons sharing the full name contained in the mark, especially when contact information of some of them are unknown.

According to the Industrial Structure Council which is the Japanese official organization carrying out investigations and deliberations on the important matters concerning the development of economy and industry, etc., under the above circumstances, there are demands for easing such requirements for registration mainly in the fashion industry where full names of a founder and a designer, etc. are often adopted as brand names. Most of fashion brands using trademarks containing full names are operated by small and medium-sized enterprises, and it is required to ease such requirements for trademark registration in the light of protecting their brands. In addition, in other countries, such as the United States, Europe, China and South Korea, the well-knownness of the full name is taken into consideration when judging the registrability and/or validity of the mark containing the another person’s full name. Therefore, from the perspective of international harmonization of trademark system, there are also demands for revision of requirements for registration of the mark containing another person’s full name.

Possible Reform
Given the above demands, the JPO is currently considering the revision that would not reject the application for the mark containing another person’s full name under the Article 4 (1) (viii) when the full name is not well-known in Japan for the purpose of adjustment of interests of the applicant and another person whose full name is contained in the applied mark. They are also considering taking the background of the application, such as a reason to file the application for such mark, into consideration when judging the registrability and validity of the mark with an effort to prevent a bad-faith application.

2.Introduction of the system of “letter of consent”

Background
In Japan, for the purpose of the protection of consumers’ interest which is one of the main goals of the Japanese Trademark Law, the JPO does not accept a letter of consent to overcome the refusal on the ground of likelihood of confusion with a prior mark in principle with an effort to prevent confusion as to the origin of goods and services. In case that either one of the applicant and the cited mark’s owner is under control of the other, the letter of consent is exceptionally acceptable to the JPO. For example, if the applicant is a parent company of the cited mark’s owner, the JPO accepts the letter of consent. If this is not the case, alternatively, a so-called “assign-back” treatment is available and trademark practitioners in Japan commonly rely on the treatment as a way to materialize co-existence of the marks. More specifically, the applicant will temporarily assign their application to the cited mark’s owner to overcome the refusal and, once the protection is confirmed, they will have the said application from the cited mark’s owner assigned back to them, and vice versa.

That being said, according to the Industrial Structure Council, in case of conducting the assign-back treatment, there is a risk entailed in the temporary assignment of the application or the prior trademark right, and the parties concerned, especially the applicant, needs to bear financial and/or procedural burdens. Therefore, the IP users including small and medium-sized enterprises wish an introduction of a less burdensome system of the letter of consent. There are also demands for international harmonization of system of the letter of consent, given that the letter of consent can be utilized for materializing co-existence of the marks in other countries.

Possible Reform
Although there are opposition views against the introduction of the system of letter of consent, given that the IP users’ needs of such introduction are increasing recently and that the protection of consumers’ interest can be ensured by designing an appropriate system, the JPO is considering the introduction of the system of letter of consent in Japan.

It is expected that the JPO’s examiner still has discretion to reject the application when there is a likelihood of confusion as to the origin of goods and services even if the letter of consent is submitted. For the purpose of securing the protection of consumers’ interest after registration of the mark, the JPO is also considering making it possible for either party to file a request for the other party to mandatorily use an indication sufficiently preventing confusion as to the origin of goods and services, and for anyone to file a cancellation action against the registration of the mark which was used with the intention of unfair competition and caused confusion as to the origin of goods and services.

With respect to the above possible revisions, the JPO accepted public comments until January 24, 2023, and they may amend the current Japanese trademark system in the near future.