The Trademark Law, etc. (Patent Law, Utility Model Law, Design Law, Trademark Law, Law Concerning Special Provisions for Procedures, etc. concerning Industrial Property Rights, etc.) will be partially amended by the “Law for Partial Amendment of Unfair Competition Prevention Law, etc.”

The amendments will (i) introduce a “Consent System” and (ii) ease the requirements for registration of trademarks that contain the name of another person. The provisions of the revised Trademark Law will come into effect as of April 1, 2024.

*(ii) below will apply to applications filed on and after the effective date (April 1, 2024).

Outline of the Amendment

(i) Consent system

The new amendment establishes Article 4(4) of the Trademark Law, which provides that a trademark that falls under Article 4(1)(xi) of the Trademark Law may be registered if the prior registered trademark owner's consent has been obtained and there is no likelihood of confusion between the prior registered trademark and the applied-for trademark.

In addition, the following provisions will be newly established or partially revised to ensure the prevention of confusion after registration of a trademark that has been registered concurrently by applying the Consent System.

・Where the use of a trademark by a first proprietor is likely to harm the business interests of a second proprietor, the second proprietor may demand that an indication suitable for preventing confusion between the two trademarks be attached to the use of the trademark (Article 24 -4, Items 1 and 2 of the Trademark Law).

・Where a first right holder uses a trademark in a manner that causes confusion with the goods or services pertaining to the business of a second right holder for the purpose of unfair competition, any person may file a request for a trial for cancellation of the trademark registration (trial for cancellation due to unfair use) (Article 52-2(1) of the Trademark Law).

Source: Japan Patent Office＜https://www.jpo.go.jp/system/trademark/gaiyo/consent/index.html>

(ii) Relaxation of requirements for registration of trademarks containing the name of another person

Under the Trademark Law prior to the amendment, an application for registration of a trademark that contains the name of another person in the composition thereof could not be registered without the consent of that person. Under the revised Trademark Law, the “name of another person ” is now limited to “a name that is widely recognized among consumers in the field of the goods or services in which the trademark is used.” (Article 4(1)(viii) of the Trademark Law). As a result, a trademark that includes the name of another person which does not meet the name recognition requirement does not need the consent of that person, and can be registered as long as it meets the requirements of the Cabinet Order ((a) “Reasonable relationship” and ( b) “No dishonest purpose”).