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Amendment to Article 4, Paragraph 1, Item 11 of the Trademark Act
～Introduction of reserved consent system～
*Based on information as of October 2023, 10 (in particular, opinions from the 24st Trademark Examination Standards Working Group dated July 7). Please note that actual operations may differ.
Overview of the current system
Regarding Article 4, Paragraph 1, Item 11 of the Trademark Act
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Registration not possible |
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Prevention of source confusion |
Application of exceptions due to operation
A: To the applicant and cited trademark ownerIf there is a controlling relationshiphandling of
(Examination Guidelines No. 30, Article 4, Paragraph 1, Item 11, 13.)
If the applicant submits evidence in (1) in addition to the claim that the applicant and the cited trademark right holder are in a relationship in (2) or (3), it will be treated as not falling under this item. .
- (1) The cited trademark right holder is under the control of the applicant
- (2) The applicant is under the control of the cited trademark owner.
- (3) Evidence that the cited trademark right holder has consented to the registration of the trademark in the application.
B: In determining the similarity of goods or servicesConsidering the actual circumstances of the transaction
(Examination Guidelines No. 30, Article 4, Paragraph 1, Item 11, 11.(4))
When the cited trademark right holder makes a statement that the designated goods/services are not similar, regardless of the similar goods/services examination standards, the goods or services claimed by the applicant shall be or judge whether the services are similar or not.
Arrangement of issues in introducing the system
★Reasons for not introducing the outlet system
① Merely reaching an agreement between the parties cannot eliminate the possibility that consumers will misunderstand or confuse the source of goods or services with respect to coexisting trademarks.→Avoidable by system design
② Even in the current system, there was an existence of assign-back (a method of temporarily matching the name of the applicant and the owner of the prior registered trademark to resolve the reason for refusal), and there was room for improvement within the scope of operation.→ Not enough
Basis for introducing the system
① Adopt a system that ensures the prevention of confusion of origin between previously registered trademarks and applied trademarks, not only at the time of registration but also after registration.
② Consent from the right holder of the prior registered trademark
Protecting the interests of consumers
It is important to protect the interests of consumers as well as applicants seeking the introduction of the system.
→Even if there is consent, there is still a risk of confusion about the sourceRegistration is not permitted forReserved outlet systemAdopt
① At the time of registration:Consent from the right holder of the earlier registered trademarkas well as the Materials explaining that there is no confusion of originDetermine whether there is a risk of source confusion based on
② After registration: Enables request for confusion prevention labeling and request for cancellation of unauthorized use.
Response after revision
■Even if there are trademarks that consist of the same constituent characters or have the same appellation, it can be considered as follows.
Even if there is consent, there is still a risk of confusion about the sourceabout
- ① The applied trademark and the previously registered trademarkexactly the sameIs it?different scalesnothing more than
- ②Products and services are also displayed.exactly the samethings of
Opinion that it should be limited to(Compared to other countries, more emphasis is placed on the existence of consent)
▼ORDS
If there is a prior trademark consisting of the same constituent characters at the search stage,
- Consider creating a logo or changing the font type
- Contact the prior trademark right holder at an early stage
- Consider limiting the description of designated products and services based on purpose and materials.