On April 7, 2025, the Japan Patent Office (JPO) announced its approval of the first trademark registration under the newly introduced “consent system” (Article 4(4) of the Trademark Act). Introduced in April 2024, this system allows the registration of a trademark that is identical with or similar to a prior trademark cited in an office action, provided that the prior trademark holder gives written consent to the coexistence and the examiner determines that there is no likelihood of consumer confusion by the coexistence.

According to the JPO examination standards, the examiner will assess the likelihood of consumer confusion based on the actual or intended use of the trademarks (not the designated goods and services), and confusion must be unlikely to occur not only at the time of grant but also in the future, in order for the application to receive a grant. One example of circumstances that could be considered to deny the likelihood of confusion, especially toward the future, is the existence of an agreement with the prior trademark holder that specifies in detail how the trademarks will be used to avoid consumer confusion (for example, through limitations on color, font, layout, method, period or place of use, or the goods and services).

In the above-mentioned first approved case, the applicant filed both a letter of consent and an agreement with the prior trademark holder specifying the manner and scope of use for both trademarks. This included an image showing the label layout for the applied-for trademark. Additionally, the applicant provided copies of the parties’ websites to demonstrate the differences in their businesses. The fact that the consent system had been applied upon granting registration was explicitly stated in the grant decision, with reference to the registration number of the prior trademark.

It remains to be seen whether an agreement with the prior trademark holder, specifying restrictions on the parties’ use of their trademarks, will generally be required in practice for the consent system to be applied. However, if such an agreement is generally required, the traditional “assign-back” procedure may often be a more practical and cost-effective option for the coexistence of identical or similar marks. Under the assign-back procedure, the subject application is temporarily assigned to the prior trademark holder and then reassigned to the original applicant upon receipt of a grant decision — the applied-for mark will be registered so long as the appropriate assignment documents are filed, without any examination on the likelihood of consumer confusion, so the parties do not need to enter into an agreement concerning trademark use.

For more information, please see the link below (in English): https://www.meti.go.jp/english/press/2025/0407_001.html