JPO Publishes Updated Trademark Examination Manual in Relation to “Letter of Consent” System

Updated Guidelines and Trademark Examination Manual

In August 2024, the Japan Patent Office (“JPO”) published an updated English version of the Trademark Examination Manual (“Manual”) regarding the examination of “Letters of Consent”. This updated Manual was published following the previously published English version of the Examination Guidelines for Trademarks (“Guidelines”) in relation to the examination of “Letters of Consent,” and together, these Guidelines and the Manual have clarified the criteria for the examination of “Letters of Consent” under the newly introduced Article 4 (4).

【Updated Manual】

• 42.400.01
  Handling of Examinations Concerning Exceptions to Another Person’s Registered Trademark Applied for Prior to the Filing Date of the Trademark Application Concerned
• 42.400.02
  Handling of Materials Relating to Claims under Article 4(4) of the Trademark Act

【Updated Guidelines】

• Chapter 19:
  Article 4(4) (Exceptions to another person's registered trademark applied for prior to the filing date of the trademark application concerned)

The Guidelines and Manual provide detailed explanations on the criteria for the Examiner to determine that there is no likelihood of confusion arising between the marks. Based on these criteria, the applicant is required to obtain consent from the owner of the cited trademark right, and then to argue and prove that there is no likelihood of confusion arising. The final decision is made by the Examiner on a case-by-case basis; however, the Guidelines and Manual present the following two types of cases; i.e., those where there is no likelihood of confusion arising, and those where there is a likelihood of confusion arising.

Group Company Relationship

The following is the case set forth in the Manual where there is, in principle, no likelihood of confusion arising.

• Manual 42.400.01
  3.Specific operations in determining “no likelihood of confusion” (4) Cases where the applicant and the holder of the cited trademark right have a certain relationship (e.g., parent-subsidiary company, sibling company, etc., so-called group company relationship)

If the owner of the cited trademark right and the applicant are objectively in a so-called group company relationship, such as a parent-subsidiary company, sibling company, etc., it is determined that, in principle, there is no likelihood of confusion.

This is an expansion of the scope of application of the previous treatment (Manual  42.111.03 Handing of Cases where the Applicant and the Owner of a Cited Trademark Right have a Dominance Relationship), which states that Article 4(1)(xi) does not apply when there is a controlling relationship between the applicant and the owner of the cited trademark. It is expected that the Letter of Consent system will now be able to be utilized even more frequently between these group companies than the previous treatment (“controlling relationship”) based on Manual 42.111.03 which has already been used for over 770 trademark applications since 2017.

Double Identity (Identical trademark / Identical goods and services)

On the other hand, the following is a case set forth in the Guidelines where there is, in principle, a likelihood of confusion arising.

The Guidelines (Chapter 19, 4 (3) Reasons for Consideration) also state that a trademark that is identical with a cited trademark (including those that differ only in scale) and used for identical designated goods or services (in the case of so-called “double identity”) is, in principle, considered to have a high likelihood of confusion. The Manual 42.400.01 clarifies that it applies only when the descriptions of the designated goods or services are exactly identical.

• Manual 42.400.01
  3.(2) Processing of the identical trademark and the identical designated goods and services
  “The statement "the identical designated goods or services" from 4. (3) of the Guidelines refers to the designated goods or designated services of the trademark as applied that have the same indication as the designated goods or designated services of the cited trademark (except for those that are conceptually included).”

This is one type of exception that cannot be registered for even if a Letter of Consent is submitted.

Conclusion

The Guidelines and the Manual have clarified the situations where the Letter of Consent system is more easily applicable and where it cannot be used, as explained above. However, most cases will continue to be examined on a case-by-case basis. As of August 2024, examinations of Letters of Consent have not yet begun, and we will be monitoring how the Guidelines and Manual are applied in actual examinations from now.