Takako OKADA

On June 30, 2022, the Japan Patent Office (JPO) published a report on several topics that were discussed by a study group convened by the JPO for improving the Japanese Intellectual Property system. Among them were two hot topics related to the trademark system, which we briefly introduce below.

1. Implementation of the Consent System for coexistence of trademarks

The JPO is discussing whether to implement the Consent System for coexistence of trademarks.

Under the current system, it is not possible to overcome prior marks that are cited in an Office Action even if the prior mark owner agrees to grant a letter of consent because the JPO holds a position that they do not accept a letter of consent. Thus, currently, the complicated and time-consuming “assign-back” scheme is often used to overcome the prior marks, which is to temporarily assign the trademark application to the prior mark owner and have it assigned back to the original applicant when the notice of allowance is issued.

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

The JPO is discussing whether to relax the requirements for registration of the trademarks containing a combination of a surname and a first name.

Under the current system, the combination of a surname and a first name is difficult to register as a trademark. An Office action will be issued if the JPO finds (for example in phone books and through the Internet) that there are other people existing with the identical name. Even if the name of a creator, singer or designer becomes famous as a brand name and the true owner thereof files a trademark application to register his/her own name, the JPO will require the applicant to obtain an approval letter from all such other people with the identical name, even if they are unknown and ordinary people.

We need to wait and see whether or not these points will be changed in the near future.

For more details, please click below.

https://www.jpo.go.jp/resources/shingikai/kenkyukai/kondankai/index.html

(written in Japanese only)