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　 　 　ＬＥＴＴＥＲ ｏｆ ＣＯＮＳＥＮＴ　 　 　 　 　 　 ｉｎ　　 JA ＰＡＮ

Fumihiko HIROSEHIROSE Int’l Patent &

Trademark

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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

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Kind of Consents discussed

Dependent 1 Complete (perfect) Consent SystemConditional (half dependent) 2 Discretion of Examination no consent admitted but 3 Examination or Opposition

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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

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

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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.

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cUBS vs UBS

2007(gyo-Ke)10061Chicago Cubs won the case that the connotation of “bear cubs” will arise from the logo of baseball team while sound ju:bi:es will not be derived from the mark separately

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Consent is ７ｔｈ element for judging similarity

i. Construction of logo, C with UBSii.Fame of US M.B.L. in Japaniii.Fame of CUBS in Japaniv.Use of logov.Registrations in JPO vi.Initial Cwith word inside in total

logo vii.Existing Consent

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Consent Submitted but denied

Appeal No 2006-20286LEBRON vs. REVLONNIKE 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）

Solution without CONSENT System

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(a) Obtain use right from the owner of cited mark while application rejected (non-exclusive use license) (b)Get registration in the name of cited registrant and obtain exclusive use right but TM right is owned by cited registrant(c) Get registration by owner of the cited registration and assign back the right to the applicant 　　

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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)

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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

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Adoption of CONSENT system

Awaiting early adoption of CONSENT system so as to harmonize the Trademark protection system

Examination Guidelineshttp://www.jpo.go.jp/cgi/link.cgi?url=/shiryou/

kijun/kijun2/ruiji_kijun9_eng.htm

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Similarity vs. ConfusionUnder 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

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　　 THANK YOU

Fumihiko HIROSEHIROSE Int’l Patent &

Trademark