First Trademark Registration under the New “Consent System”
Updated: March 12, 2026
In this article, we introduce the first trademark registration achieved under Japan’s newly implemented Consent System and provide our comments based on this case.
The Consent System, effective as of April 1, 2024, allows the registration of a trademark even if it is identical or similar to a prior registered trademark, provided that the owner of the prior mark gives consent. In such cases, the application is deemed not to fall under the grounds for refusal stipulated in Article 4(1)(xi) of the Trademark Act.
Ordinarily, when a trademark application is identical or similar to a previously registered mark, and the designated goods or services are also identical or similar, an office action citing Article 4(1)(xi) is issued, refusing the application.
Previously, overcoming such refusals required measures such as arguing the dissimilarity of the marks, filing a non-use cancellation action, or negotiating an assignment, including an assignment-back, of the prior mark.
The new Consent System has attracted attention because it may allow for a smoother registration process based on the consent of the prior trademark owner, without the need for the above measures.
The Ministry of Economy, Trade and Industry (METI) announced the first case in which a trademark registration was granted under the Consent System.
Upon reviewing the application history, we confirmed that the necessary documents were submitted promptly after filing and that the consent of the prior trademark owner was properly explained. As a result, the application proceeded directly to a decision of registration without receiving an office action.
It appears that the applicant’s advance preparation of the required documentation and timely submission helped avoid unnecessary refusals and enabled smooth registration.
Our firm has a proven track record of successfully overcoming refusals through argument, assignment-back, or cancellation actions. At the time of the original article, we had not yet handled a case using the Consent System, but this first registration case provided a valuable reference for future practice.
Given the high level of interest in this case, we note that by the time we reviewed the file, as many as eight requests for file inspection had already been filed.
(Added on March 12, 2026)
Since then, our firm has also handled a case in which the Consent System was used to overcome a refusal under Article 4(1)(xi) of the Japanese Trademark Act, resulting in a decision of registration. This has reaffirmed, from a practical standpoint, that the Consent System can be an effective option in appropriate cases.
However, as also noted in the materials above, registration requires not only the consent of the owner of the prior registered trademark, but also the absence of any likelihood of confusion between the prior registered trademark and the applied-for trademark. Therefore, in a written opinion, it is necessary not merely to submit a letter of consent, but also to properly argue that there is no likelihood of confusion.
(Reference)
Ministry of Economy, Trade and Industry (METI) Website:
“First Trademark Registration under the Consent System”
https://www.meti.go.jp/english/press/2025/0407_001.html