Revision of Trademark Examination Standards (Introduction of Consent System, etc.)

Recently, the Japan Patent Office (JPO) announced the revision of the trademark examination standards in response to the 2023 amendment of the law, including the introduction of the Consent System.

Trademark Examination Guidelines (Revised 16th Edition)

The revised examination criteria will apply to applications filed on or after April 1, 2024.

The main points of the revisions are as follows

1. establishment of new Article 4, Paragraph 4 (introduction of the Consent System)

With the introduction of the Consent System, even if a trademark falls under Article 4(1)(xi), if the trademark owner of the prior registered trademark has given his/her consent and there is no risk of confusion between the two, the provisions of Article 4(1)(xi) will not apply to such trademark, and the revised examination standards explain the criteria for judgment in such cases. In addition, Article 8 has also been revised accordingly to apply mutatis mutandis.

2. relaxation of requirements under Article 4(1)(viii) (relaxation of requirements for registration of trademarks that include the name of another person)

In response to the imposition of a requirement of a certain degree of name recognition and a requirement to consider the applicant’s circumstances (government ordinance requirement) on “the name of another person,” an item on the requirement of a certain degree of name recognition and an item on the government ordinance requirement were added to the examination criteria, respectively, and points to keep in mind when determining the requirement of a certain degree of name recognition and specific examples of the government ordinance requirement were clearly indicated.

Other revisions have been made in accordance with the revision of the International Classification.