Overview
Japan has introduced a “Consent System” under its Trademark Law, allowing the coexistence of similar trademarks under certain conditions. This reform was enacted through the amendment of the Unfair Competition Prevention Act and related laws promulgated on 14 June 2023, and came into force on 1 April 2024.
Background
Previously, Japan strictly refused the registration of a trademark that is identical or similar to a prior registered trademark for identical or similar goods/services (Article 4(1)(xi) of the Trademark Law).
Unlike many other jurisdictions, consent from the prior trademark owner alone was not sufficient to overcome such refusal, due to concerns about consumer confusion.
However, growing needs—particularly from startups and SMEs seeking flexible brand strategies, as well as international harmonization—led to the adoption of the consent system.
Key Features of the Consent System
1. Registration with Consent
Even if a trademark conflicts with a prior registration, it may now be registered if:
- The applicant obtains consent from the prior trademark owner, and
- There is no likelihood of confusion between the marks.
This is stipulated under the newly introduced Article 4(4) of the Trademark Law.
2. Examiner’s Substantive Review
The Japan Patent Office (JPO) does not automatically accept consent.
Applicants must submit evidence, and the examiner will assess:
- The specific circumstances of both trademarks
- Whether confusion is likely in the marketplace
3. Applicability to Conflicting Applications
The system can also be used when multiple applications are filed on the same date (Article 8 adjustment), allowing resolution through consent.
4. Post-Registration Safeguards
To prevent confusion after registration, the law provides:
- Request for indication to prevent confusion
→ A party may request the other to use appropriate labeling to avoid confusion. - Cancellation for improper use
→ If a trademark is used in bad faith causing confusion, any party may request cancellation through a trial.
Practical Impact
The introduction of the consent system:
- Expands branding flexibility in Japan
- Aligns Japan with international trademark practices
- Provides new strategies for overcoming refusals based on prior marks
However, consent alone is not sufficient—a substantive “no likelihood of confusion” assessment remains critical.
Source
- Japan Patent Office (JPO), “Introduction of the Consent System” (published January 5, 2024)