Update on discussions for improving the Japanese Trademark System
Takako OKADA

This is a follow-up on how discussions are developing with respect to the two hot topics shared in our news report posted on July 6, 2022 regarding the Japanese trademark system (https://www.aiklaw.co.jp/en/whatsnewip/2022/07/06/3566/). On December 23, 2022, the Trademark System Subcommittee of the Japanese government’s IP Committee of the Industrial Structure Council provided a report summarizing their discussions to date on these two topics, including their proposals toward the revision of the trademark law. Below is an outline of their proposals.

1. Implementation of the Consent System for coexistence of trademarks

The Subcommittee proposed to introduce a Consent System which accepts a “coexistence consent letter” issued by the owner of a cited trademark registration, but with “reservation to reject.” That is, even if a coexistence consent letter is filed to overcome the Office Action citing the prior trademark, the Examiner may reject the application if he/she decides that confusion would likely occur among consumers by the coexistence. The Subcommittee further proposed to introduce remedial measures (e.g., cancellation action against registration of confusing trademarks) that can be taken if as a result of the coexistence, confusion actually occurs among consumers. The introduction of the Consent System is for the benefit of trademark owners/applicants, but the Subcommittee is carefully considering the protection of the interest of consumers as well, which is also an important purpose of the trademark system.

2. Relaxation of requirements for registration of trademarks containing a combination of a surname and a first name

Under the current law, a trademark application of a trademark being a name (surname + first name) of another person will be rejected unless a consent letter is obtained from such another person. There was strong demand for revising such law, especially from the fashion industry where the name of designers and founders are often used as brand names. The Subcommittee proposed to require that such another person’s name has a “certain level of recognition” in order to become a reason for rejecting the application. In other words, if the trademark is a name of another person but that person’s name does not have a “certain level of recognition,” the trademark can be registered without requiring a consent letter from that person. The Subcommittee also proposed to require the consideration of the “applicant’s circumstances” (e.g., whether the applicant has reasonable reason to file such name as his/her trademark), in order to prevent abusive trademark filings. The Subcommittee is trying to balance the interest of the applicant filing a trademark being a name, and the personal interest of other people having the same name as the trademark. They will further discuss in detail what factors should be considered upon determining the “certain level of recognition” and the “applicant’s circumstances.”