We are pleased to announce that our firm has achieved the first landmark case in which the Japan Patent Office (JPO) accepted “Coexistence of Trademark Registrations by Consent” under Article 4(4) of the Trademark Act, in connection with a trademark application filed through the Madrid System.

For a long time, the JPO had not accepted “consent” as a basis for overcoming a citation. Recently, however, the JPO has changed its practice and now allows consent from the owner of the cited mark during ex officio examination. In addition to submitting a letter of consent, the applicant must also demonstrate that there is no likelihood of confusion between the marks.

In this case, we successfully persuaded the examiner that the coexistence of both marks would not cause confusion by submitting a consent agreement and presenting detailed arguments on the distinctions between the parties’ products.

We will continue to closely monitor developments in JPO practice and provide our clients with strategic and up-to-date support in protecting their trademarks in Japan.

IRN1733321: https://www.j-platpat.inpit.go.jp/c1801/TR/JP-1733321-20240820/49/ja