The revision of the Japanese Trademark Act, which came into effect on April 1, 2024, introduced several significant changes to Japan’s trademark system.
The key points of this revision include:
(1) The introduction of the consent system;
(2) Relaxation of registration requirements for trademarks containing another person’s name.
Practical Implications and Considerations
With this amendment to the law, companies and brand managers can design more flexible trademark strategies. However, careful consideration is required when applying the consent system, particularly in evaluating the likelihood of confusion. Similarly, when registering a trademark containing another person’s name, it is important to assess consumer perception appropriately.
Key points to consider in practice include:
• When utilizing the consent system, carefully review the contractual terms with the prior trademark owner and prepare an agreement if necessary.
• When considering the registration of a trademark containing another person’s name, conduct market research on consumer perception to carefully assess the viability of registration.
This revision of the Law enhances the flexibility of Japan’s trademark system but also introduces new challenges related to application requirements and practical implementation. It is essential to analyze specific cases thoroughly.
Introduction of the Consent System
Previously, under Article 4, Paragraph 1, Item 11 of the Trademark Act, the registration of trademarks similar to a prior registered trademark was not allowed, even if the parties involved had reached an agreement. However, with this revision of the law, the “consent system” has been introduced, allowing registration if the prior trademark owner gives explicit consent.
This system is expected to have the following impacts on practice:
• Flexible brand portfolio management
If a corporate group wishes to use similar trademarks within its group, registration will now be permitted with mutual agreement, enhancing flexibility in brand management.
• Facilitating trademark registration in joint ventures
In cases of joint development or licensing agreements, different business entities often use similar trademarks. Previously, this posed a registration obstacle, but going forward, trademark registration can proceed smoothly based on mutual agreement.
However, certain conditions must be met for the application of the consent system:
• The prior registered trademark owner must provide clear consent.
• There must be no likelihood of confusion regarding the source of the goods or services.
The requirement that “there must be no likelihood of confusion” will be carefully reviewed during the examination process. Factors such as brand distinctiveness and actual market use will likely be considered. Therefore, in practice, merely obtaining the rights holder’s consent may not be sufficient.
Relaxation of Registration Requirements for Trademarks Containing Another Person’s Name
Previously, under Article 4, Paragraph 1, Item 8 of the Trademark Act, trademarks containing another person’s name could not be registered without the name holder’s consent. However, with this revision, registration is now possible under certain conditions, even without consent.
The specific conditions include:
• The applicant has a particular connection to the name.
• The name is widely recognized to the extent that consumers do not associate it with a specific individual.
• The application is not made with fraudulent intent.
This change is expected to make it easier to register trademarks that include the names of historical figures or common surnames. However, if the name in question is well-known or strongly associated with a famous individual, registration may still be difficult.
- Introduction of the Consent System
Previously, under Article 4, Paragraph 1, Item 11 of the Trademark Act, the registration of trademarks similar to a prior registered trademark was not allowed, even if the parties involved had reached an agreement. However, with this revision of the law, the “consent system” has been introduced, allowing registration if the prior trademark owner gives explicit consent.
This system is expected to have the following impacts on practice:
• Flexible brand portfolio management
If a corporate group wishes to use similar trademarks within its group, registration will now be permitted with mutual agreement, enhancing flexibility in brand management.
• Facilitating trademark registration in joint ventures
In cases of joint development or licensing agreements, different business entities often use similar trademarks. Previously, this posed a registration obstacle, but going forward, trademark registration can proceed smoothly based on mutual agreement.
However, certain conditions must be met for the application of the consent system:
• The prior registered trademark owner must provide clear consent.
• There must be no likelihood of confusion regarding the source of the goods or services.
The requirement that “there must be no likelihood of confusion” will be carefully reviewed during the examination process. Factors such as brand distinctiveness and actual market use will likely be considered. Therefore, in practice, merely obtaining the rights holder’s consent may not be sufficient. - Relaxation of Registration Requirements for Trademarks Containing Another Person’s Name
Previously, under Article 4, Paragraph 1, Item 8 of the Trademark Act, trademarks containing another person’s name could not be registered without the name holder’s consent. However, with this revision, registration is now possible under certain conditions, even without consent.
The specific conditions include:
• The applicant has a particular connection to the name.
• The name is widely recognized to the extent that consumers do not associate it with a specific individual.
• The application is not made with fraudulent intent.
This change is expected to make it easier to register trademarks that include the names of historical figures or common surnames. However, if the name in question is well-known or strongly associated with a famous individual, registration may still be difficult. - Practical Implications and Considerations
With this amendment to the law, companies and brand managers can design more flexible trademark strategies. However, careful consideration is required when applying the consent system, particularly in evaluating the likelihood of confusion. Similarly, when registering a trademark containing another person’s name, it is important to assess consumer perception appropriately.
Key points to consider in practice include:
• When utilizing the consent system, carefully review the contractual terms with the prior trademark owner and prepare an agreement if necessary.
• When considering the registration of a trademark containing another person’s name, conduct market research on consumer perception to carefully assess the viability of registration.
This revision of the Law enhances the flexibility of Japan’s trademark system but also introduces new challenges related to application requirements and practical implementation. It is essential to analyze specific cases thoroughly.