[2023 Law Revision] What will change with the introduction of the consent system? Thorough explanation of the key points for utilizing trademark registration and assign back

With the legal revision in April 2023, the introduction of the "consent system" is attracting attention in the world of trademark registration. In this article, we will explain in detail the situations in which the outlet system is actually used, including the potential for confusion and comparisons with the assign-back system. If you are thinking about registering a trademark or considering your intellectual property strategy, please use this as a reference.

Summary of the introduction of the outlet system

In this revision of the Trademark Law, a "consent system" has been introduced that allows trademark registration as an exception, even if the trademark is the same or similar to a trademark already registered by someone else, by obtaining consent from the owner of the registered trademark (trademark right holder) (applicable to applications on or after April 1, 2023).

In the past, if a trademark that was the same as or similar to another's registered trademark was applied for the same or similar goods or services, it would be rejected under Article 4, Paragraph 1, Item 11 of the Trademark Law. However, according toArticle 4, Paragraph 4 of the Trademark Act, registration is possible if certain requirements are met by obtaining the new "consent of the trademark owner."

The key point is that there is no risk of confusion

However, consent does not necessarily mean that a trademark can be registered. Specifically, the following requirements must be met:

• No risk of confusion with previously registered trademarks
• Even considering the well-known level of the trademark and actual transaction conditions, the possibility of confusion occurring in the future is low

In short, a trademark that is so confusing that a consumer might misunderstand ``Are these products or services from the same company?'' cannot be registered, no matter how much the parties agree.
For example, if the trademark and the product are almost identical, there is a high risk of confusion, so registration would be difficult even if there is evidence. In addition, since not only the current but also the future possibility of confusion is taken into account, it is unclear at this point, just after the introduction of the system, how much evidence is required to support this point.

Comparison of outlet system and assign back

Actually, even before the introduction of the consent system, it was possible to register a similar trademark even if there was a previously registered similar trademark by using the assign back method.

Assign back refers to the process of changing the name of the applicant to the owner of the previously registered trademark, and then changing the name back to the applicant after the registration is granted. Although it is time-consuming as it requires changing the name twice, it is a method that has been used in practice in certain situations.

Why is assignback still useful?

With the introduction of the consent system, you may be thinking, "Wouldn't the process be easier if I just submitted a consent form?" However, additional contracts and evidence may need to be prepared tocertify that there is no risk of confusion.
Therefore, if the cost of preparing certificates for the consent system is high, there may be cases where it is decided that it would be faster to register by assigning back.