Thursday, May 11 2023   \  Published by Baker Mckenzie .

Japan: The Draft Trademark Bill about letters of consent

Japan: The Draft Trademark Bill about letters of consent

In March 2023, the draft amendment bill which includes a new procedure regarding letters of consent was approved by the Cabinet, and has been submitted to the Diet (the Japanese legislature). After the Diet passes the amendment, the amended law will be implemented.

1. Summary of the draft amendment bills

The draft amendment bill covers, among other items, an amendment to the trademark law, which introduces a procedure for letters of consent.

Letters of consent will allow a latter-filed trademark to co-exist with an earlier trademark if the applicant of the latter filed trademark obtains an agreement indicating the consent of the earlier filed mark for the two marks to co-exist. Under the current trademark law, letters of consent are not acceptable, therefore a procedure called "assign-back" has often been used to obtain a trademark registration when the registration of a latter-filed trademark is blocked by an earlier-filed trademark. The draft amendment bill allows for the adoption of letters of consent under the following circumstances: (i) the earlier trademark owner issues a letter of consent, and (ii) there is no likelihood of confusion between the earlier trademark and the latter trademark.

2. The current trademark law and practice about letters of consent

Under the current trademark law, a latter-filed trademark cannot be registered (i) if the latter mark is identical to/confusingly similar to a prior-filed trademark and (ii) if the designated goods/services covered by the latter trademark are similar to those covered by the prior trademark application/registration regardless of whether there is actual confusion between the latter trademark and the earlier trademark. Read more

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