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Letters of consent in effect as of April in Japan

Every time the trademark law was amended, the introduction of letters of consent was discussed and eventually set aside. But, finally, with last year’s amendment of the trademark law, letters of consent as an option to overcome the prior mark issue has been recognized. The implementation date is scheduled on April 1st. JPO has released the draft examination guideline. Below is an overview of its key points. The most important point is that letters of consent do not unconditionally overcome prior mark issues. JPO reserves the right to refuse an application, despite the presence of a letter of consent, if it determines that there is a likelihood of confusion.

The amended trademark law provides that a refusal based on similar marks is not applied where (a) a letter of consent is obtained from the registrants of the prior marks, and (b) there is no likelihood of confusion between the prior mark and the applied-for mark. Let’s see how these conditions are explained in the draft guideline.

(a) Letters of consent
Letters of consent include an authorization by prior mark holders and are issued before the final decision is made.

(b) No Likelihood of Confusion
The law and draft guideline explicitly provide “naked” letters of consent are not accepted. These letters must clarify why a likelihood of confusion does not and will not occur in the future. The draft guideline specifies that co-registration of identical marks for identical goods/services is not permitted despite letters of consent. It exemplifies possible scenarios of co-registration as follows:

Mark: “Combination of word and device” vs “word”
Usage: “Use of a mark with a company name” vs “word”
Purpose: “Game computer programs” vs “computer programs for medical use”
Price: “High-end computer programs” vs “low-end computer programs”
Market: “Mass-market goods” vs “made-to-order goods”
Season: “Goods sold only in spring” vs “goods sold only in fall”
Location: “Services offered in Hokkaido” vs “services offered in Okinawa”

The draft examination guideline is currently open for public comments and may be amended. We will keep updating this information. Below are frequently asked questions regarding the letters of consent at this point.

Q1: Are amendments of goods/services required in a pending application or registration? For example, if the pending application and citation cover “footwear (Subclass: 22A01),” but actual goods in-use are “rain boots” and “beach shoes,” does the applicant/registrant need to limit the good to the actual goods?
A1: The draft guideline does not refer to this point, but, probably yes to the applicant, but no to the registrant.

Q2: Will letters of consent be applicable to pending applications filed before April 1?
A2: No. Applications filed after April 1 are subject to the amended law.

Q3: Will letters of consent be applicable to divisional applications filed after April 1?
A3: No. Divisional applications are deemed to be considered as filed at the time of the original application filled before the effective date, and therefore, the amended law will not be applied.

Q4: Will letters of consent be applicable to pending applications with a priority claim where the first application was filed before April 1 and the Japanese filing date is after it?
A4: Yes. Applications with a priority claim filed after April 1 is subject to the amended law.

Q5: What happens if confusion arises from the use of trademarks that have been co-registered by letters of consent?
A5: The co-registrations are subject to a cancellation, but only in case where confusion arises due to bad faith use.

Q6: Are there any differences between registration through letters of consent and through re-assignment?
A6: Registration with letters of consent can be confirmed on publication gazettes and online database.