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ＬＥＴＴＥＲ　ｏｆ　ＣＯＮＳＥＮＴ 　　　　　　ｉｎ JA ＰＡＮ

ＬＥＴＴＥＲ　ｏｆ　ＣＯＮＳＥＮＴ 　　　　　　ｉｎ JA ＰＡＮ. Fumihiko HIROSE HIROSE Int’l Patent & Trademark. LETTER of CONSENT SYSTEM. System is not adopted in JAPAN ( vs. harmonization ) Japan Patent Office discussed the possibility of adopting system but not affirmative

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ＬＥＴＴＥＲ　ｏｆ　ＣＯＮＳＥＮＴ 　　　　　　ｉｎ JA ＰＡＮ

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  1. ＬＥＴＴＥＲ　ｏｆ　ＣＯＮＳＥＮＴ　　　　　　ｉｎJAＰＡＮＬＥＴＴＥＲ　ｏｆ　ＣＯＮＳＥＮＴ　　　　　　ｉｎJAＰＡＮ Fumihiko HIROSE HIROSE Int’l Patent & Trademark

  2. LETTER of CONSENT SYSTEM System is not adopted in JAPAN ( vs. harmonization ) Japan Patent Office discussed the possibility of adopting system but not affirmative There is no case recognizing the evidential value of a consent

  3. Kind of Consents discussed Dependent 1 Complete (perfect) Consent System Conditional (half dependent) 2 Discretion of Examination no consent admitted but 3 Examination or Opposition

  4. 3 Examination Guideline amended in 2007 Article 4 (1) xi (4-1-11) (Similarity to cited Registration) Explanation and evidence submitted by the applicant will be taken into consideration but Approval (Consent) by the owner of the cited trademark is excluded

  5. §4-1-11 Similarity Examination (1) Pronunciation (2) Appearance (3) Concept (Meaning) *Written Explanation and Evidence of Trade condition ( possible confusion )

  6. Trial Decision・ Court Decision • There is one decision in 2007, CUBS vs. UBS, accepting a written CONSENT after revision of Similarity Examination Guideline. • No further decision since then.

  7. cUBS vs UBS 2007(gyo-Ke)10061 Chicago Cubs won the case that the connotation of “bear cubs” will arise from the logo of baseball team while sound ju:bi:es will notbederivedfrom the mark separately

  8. Consent is ７ｔｈ element for judging similarity • Construction of logo, C withUBS • Fame of US M.B.L. in Japan • Fame of CUBS in Japan • Use of logo • Registrations in JPO • Initial Cwith word inside in total logo • Existing Consent

  9. Consent Submitted but denied Appeal No 2006-20286 LEBRON vs. REVLON NIKE lost the case even after submiting and asserting the existing of CONSENT Decision clearly stated that Consent system is not admitted under current laws (2009.３.２）

  10. Solution without CONSENT System (a) Obtain use right from the owner of cited mark while application rejected (non-exclusive use license) Get registration in the name of cited registrant and obtain exclusive use rightbut TM right is owned by cited registrant Get registration by owner of the cited registration and assign back the right to the applicant

  11. Demerit of the Assign Back Two similar marks are registered in the name of different companies and thus both parties cannot register a new mark (when filing new version “assign back” is needed again) Must not fail to renew the registration (hard to register the same mark again)

  12. Escaping Assign Back (1) Mother Company hold everything Holding Company hold and administrate (2) Split holders based on each classification and company mainly concerned holds the right respectively

  13. Adoption of CONSENT system • Awaiting early adoption of CONSENT system so as to harmonize the Trademark protection system • Examination Guidelines http://www.jpo.go.jp/cgi/link.cgi?url=/shiryou/kijun/kijun2/ruiji_kijun9_eng.htm

  14. Similarity vs. Confusion Under consideration: scope of similarity would become narrower, but criteria are unclear Introducing Consent system is more effective than amending unclear similarity criteria, which is not used effectively up until now

  15. THANK YOU Fumihiko HIROSE HIROSE Int’l Patent & Trademark

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