[Patent Attorney Thorough Explanation] Complete version of the trademark consent system | Reversal registration technique when you are told that your trademark is similar to someone else's trademark

Trademark rights last semi-permanently if renewed repeatedly. Even if your business is small and well-separated now, if your business expands in the future and there is a possibility of competition, registration will not be accepted.

Specifically, the Japan Patent Office conducts examinations by comprehensively considering the following factors:

8 factors considered in the review

1. Degree of trademark similarity (Are they too similar?)

2. Trademark familiarity (famous brands are more likely to be confused)

3. Distinctive features of the trademark (coined word or common word)

4. Presence of house mark (Is there a company name logo, etc.)

5. Possibilities of diversification in companies

6. Relationship between goods and services

7. Commonality of the users of the product, etc. (Is it for professionals or the general public, etc.)

8. Trademark usage and other transaction details

Among these, ``8. Trademark usage and other actual circumstances of transactions'' is particularly controllable through the applicant's efforts and negotiations. The key to success is how concretely we can prove and agree on this point.

3. "Specific transaction facts" that should be included in the agreement

The Examination Operation Materials (42.400.01) provides examples of specific matters (a to g) that are considered as "trademark usage and other transaction circumstances."

When using the consent system, it is effective to agree on the following "rules for segregation" with the other party and submit them in writing (agreement/contract).

① Structure of trademark used (a)

• Fixed combination: "Always use figures and text in the same positional relationship"

• Limited font/color: "Always use specific corporate colors or designated fonts"

• Addition of house mark: "Always use the company name (〇〇 Co., Ltd.) and logo mark together"

② Limited use of goods and services (c)

Even if the designated products are the same "computer program," confusion can be prevented by strictly separating the uses.

• Example: Party A will use it only for "gaming purposes" and Party B will use it only for "medical purposes."

• Example: Party A will use it only for products in the "high price range (over 100,000 yen)" and Party B will only use it for products in the "low price range".

③ Sales methods/regional segregation (d, f)

• Sales method: One is retail only at mass retailers, the other is only made to order through door-to-door sales.

• Sales area: One is limited to Hokkaido, the other is limited to Okinawa Prefecture.

• Sales period (e): Spring limited sale, fall limited sale, etc.

④ Measures to prevent confusion (g)

We will also agree on what to do in case of confusion.

• Example: Notify the other party and promptly take resolution measures (such as adding a cancellation notice) after consultation.

It is necessary to accumulate these circumstances and build a logic that says, ``If the classification is so clear, consumers will not make a mistake.''

4. Important notes to prevent "future confusion"

Examiners approach the examination with the suspicion that even if they keep their promises now, they may break them in the future. Therefore, the submitted materials require ``guarantee that they will not change in the future''**.

① Agreement period (NG and OK examples)

The screening criteria strictly refers to the risk of future fluctuations.

• [Example of failure] Short-term agreement: In principle, "short-term agreement such as one or two years" is not accepted. This is because there is no guarantee of updates and there is a possibility of confusion in the future.

• [NG example] Agreement with the right to cancel: A contract that can be canceled at any time by either party's will is considered to lack future stability, even if there is no fixed period.

• [OK example] Permanent agreement: An agreement that lasts as long as the rights exist, such as "while the registrations of both trademarks subsist," is required. However, if it is clear that the other party's trademark rights will be extinguished, the agreement made up to that point may also be considered.

② Existence of exclusive license holder/non-exclusive license holder

What is often overlooked is the existence of license agreements (usage rights).

If a cited trademark has an exclusive use right or a non-exclusive use right, it is necessary to avoid confusion not only with the trademark right holder but also with the right holder (licensee).

Even if the trademark owner approves, registration will not be accepted if it is confused with the business of the licensee who is actually using the trademark. In this case, coordination including the licensee and submission of documents (proof that there will be no confusion) will be required.

③ Special provisions for group companies (parent/child/sibling companies)

If the applicant and the cited trademark right holder are related to a group company such as a parent subsidiary or a sibling company, the examination will be a little more flexible.

This is because, in principle, there is no risk of misidentifying the products as those of "other people" (as the origin of the group in a broad sense is the same).

However, even among group companies, confusion in the narrow sense of "which company's product belongs to" should be avoided, and it is desirable to have an agreement such as adding the fact that the product is a group company to the trademark (e.g. 〇〇 Group).

5. How to write documents and important points to submit to the Patent Office

In order to apply for the system, please submit the following materials in addition to the regular application documents (see Material Handling 42.400.02).

(1) Consent Letter

This is a document stating that the cited trademark owner approves your trademark registration.

• Required items: Name and address of the cited trademark owner, registration number, applicant's application number, designated products, etc., and a statement that "I consent to the trademark registration."

• Format: The title does not have to be "Letter of Consent", but the above content must be clear.

(2) Materials clarifying that there is no risk of confusion (Agreement)

For practical purposes, this material is the most important. Usually, a copy of the "agreement (contract)" signed between the parties will be submitted.

• Description contents: The aforementioned "restrictions on usage," "limitation of use," "future agreements," etc. must be specifically stated.

• Availability of summary: If you do not wish to provide the entire contract (including confidential information such as consideration), you may submit a written summary of the agreement. However, if you summarize too much and the measures to prevent confusion become unclear, you will be asked for additional materials (original documents, etc.), so be careful.

• Other evidence: We will also submit documents that prove that the agreement is in line with reality, such as brochures, copies of websites, business plans, etc.

(3) Opinion form

It is not mandatory to submit a written opinion, but as stated in the screening criteria, it will be considered if a "specific explanation that there is no risk of confusion" is provided.

A patent attorney can logically explain how the submitted agreement will prevent confusion and what the actual market situation is, increasing the certainty of registration.

6. Risks of using the consent system and the role of patent attorneys

After reading this far, some of you may be thinking, "Isn't it possible to do the procedure myself as long as I get the other party's permission?" However, the use of the consent system carrieshuge risks that can tie up future business.

Risk 1: Loss of business freedom

In order to convince the Japan Patent Office that there will be no confusion, the agreement will include strict restrictions such as ``not to be used for anything other than this product'' and ``the design of the logo will never be changed.''

This could lead to abandoning your company's future potential for new product development and rebranding. Careful consideration is required to determine whether such restrictions are appropriate as a business decision.

Risk ②: Rejection/dispute due to incomplete agreement

An agreement that uses a template online is at risk of being rejected because it does not meet the "Japan Patent Office's examination standards (prevention of future changes, etc.)". Additionally, if the contract is inadequate under private law, you will not be able to protect your company in the event that you have trouble with the other party in the future.

Risk ③: Responding to correction instructions

As a result of the examination, if it is determined that there is a risk of confusion with this designated product, you may be asked to make an amendment to delete (reduce) the designated product (42.400.01 4.).

A sophisticated negotiation with the examiner is required to determine the extent to which concessions can be made.

Why you should hire a patent attorney

The consent system is not "document preparation work" but "advanced negotiation and strategic work".

1. Familiarity with examination standards: You can decipher the latest operational materials and construct logic (written opinions) that will satisfy examiners.

2. Drafting the right agreement: We design contracts that maximize your business freedom while increasing your chances of registration.

3. Coordination with the other party: By having experts intervene, we eliminate emotional arguments and support consensus building in a way that is beneficial to the other party (preventing conflicts, etc.).

7. Summary: Consult an expert before giving up

With the introduction of Article 4, Paragraph 4 (consent system) of the Trademark Act, there is now a possibility of relief even in cases where registration was previously given up because there was another person's trademark.

But the road is not always smooth. It takes a high level of specialized knowledge and experience to prove that there is no risk of confusion, not only now but in the future, and to conclude contracts that protect your business.

• Notification of reasons for refusal (Article 4, Paragraph 1, Item 11) has been received

• I have a good relationship with the other company, but I don't know what kind of documents to exchange

• I want to organize the trademark portfolio among group companies

If you have such concerns, please consult a patent attorney specializing in trademarks.

At our office, we will propose the optimal strategy to protect your company's important brand and acquire rights based on the latest screening procedures.

There is no need to give up immediately just because you have a prior trademark. Take advantage of the new system wisely and ensure your brand value.