First Trademark Registration under the New “Consent System”

April 8, 2025

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 (assignment-back) of the prior mark.

The new Consent System has attracted attention as it allows for a smoother registration process based on the consent of the prior trademark owner, without the need for the above steps.

Recently, 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 promptly submitted after filing, and that consent from 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 required documentation and timely submission helped to avoid unnecessary refusals and enabled a smooth registration.

Our firm has a proven track record of successfully overcoming refusals through argument, assignment-back, or cancellation actions. However, this marks our first experience utilizing the Consent System, and we believe it provides 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.

(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