Registration and Licensing of Use of Trademarks at the Japan Patent Office under the jurisdiction of the Ministry of Economy, Trade, and Industry – From the leading patent firm

I’m thinking of registering a trademark for a new product I’m going to manufacture and sell. Is there a trademark that cannot be registered for some reason? Mr. DX, please let me know if you know.
Yes, there are. To explain in detail, Articles 3 and 4 of the Trademark Law stipulate that a trademark cannot be registered. Article 3 provides for trademarks that do not have the power to distinguish between the applicant’s own and other products, and Article 4 provides for trademarks that do not qualify for trademark registration from the standpoint of public interest or the protection of private interests. If a trademark cannot be registered, there is a risk of infringement of the rights pertaining to registered trademarks of others identical or similar to that trademark, and the trademark cannot be used with confidence.

1. what is consent when applying for trademark registration?

Before using a trademark, consider whether it can be registered

As shown in the above conversation between Mr. DX and Mr. Gomaji, there are some trademarks that cannot be registered. Therefore, before using a trademark, please check whether the trademark can be registered.

Trademarks (letters or logos) that include the name of another person cannot be registered.

For example, Article 4(1)(viii) of the Trademark Law states that a trademark that includes the likeness, name, famous stage name, famous abbreviation, etc. of another person may not be registered. These trademarks cannot be registered even if part of the trademark is the name of another person and the other part contains letters, logos, etc.

This provision is intended to protect the moral rights of others, since the unauthorized registration of a trademark containing another person’s name, etc., will result in damage to that person’s moral rights.

(However, the above provision is a provision for both times, and a trademark that falls under this provision at the time of the examination decision but not at the time of the application procedure may be registered from the viewpoint of relief.)

Trademark registration is possible with the consent of another person: where to submit a letter of consent.

Even in such a case, there is a way to obtain a trademark registration. If you have the consent of that other person, you can obtain a trademark registration. In this case, a letter of consent must be prepared and submitted to the JPO for application.

Contents of a “Letter of Consent of Another Person

The letter of consent must include the following information

・A statement identifying the person concerned

 The name and address or residence of such person. (If the person is considered well-known, only his/her name, stage name, etc. will suffice.)

・A statement that the applicant consents to the registration of the trademark in the application.

 The application number, the goods/services to be designated, the category of goods/services, and a statement that the applicant consents to the registration of the trademark.

Example of “Abbreviation of the name of another person”: Case example of the Moon Friendship Association case

The trade name of a stock company falls under the category of “name of another person,” and the part of the trade name of a stock company that excludes the word “Kabushiki Kaisha” falls under the category of “abbreviation of another person’s name. Therefore, if the part of the trade name excluding the word “Kabushiki Kaisha” is judged to be well-known, it may not be possible to register the trademark and obtain trademark rights.

What are the criteria for determining notoriety? : Case precedent in the International Liberty Academy case.

Whether or not the abbreviation is a well-known abbreviation is judged based on whether or not the abbreviation is generally accepted “not only by consumers and traders” as referring to the person in question.

What happens if the consent is withdrawn in the middle of the process?

(Article 4(3) of the Trademark Law) Leonard Kamholt case

Article 4(3) of the Trademark Law provides that a trademark may be registered if it does not fall under Article 4(1)(viii) both at the time of application and at the time of examination. The purpose of Article 4(3) is that it is not reasonable to reject a trademark that was not well-known and did not require consent at the time of filing, due to a change in objective circumstances beyond the applicant’s control after filing.

On the other hand, to allow registration even in cases where consent is withdrawn after the application has been filed due to a change in personal interests would be contrary to the intent of Paragraph 8 of the same Article, which states that consent is required for the protection of personal interests. Therefore, if the consent is withdrawn after the application has been filed, the trademark cannot be registered.

2.  The system of granting permission to use a registered trademark (license agreement) and application

What are trademark rights? Exclusive and exclusive right protected by trademark law.

By filing an application and obtaining trademark rights for a trademark of his/her choice, the trademark owner is entitled to exclusive use of the registered trademark (e.g., letters and logos).

This helps to maintain the business reputation and order of trade of the trademark owner and protects the interests of ordinary consumers who purchase products bearing the trademark on trust.

What is a license to use?

Trademark right holders may not only use the registered trademark themselves but may also grant a license to a third party to use a trademark identical or similar to the registered trademark within a contractually defined scope. Within the scope set by the contract means, for example, a certain period (e.g., three years, etc.), a certain geographical area (e.g., the Kanto region, etc.), etc.

The trademark owner may obtain a royalty (license fee) as consideration.

When do you grant a license to use a registered trademark?

For example, in the following cases:

・When you want to expand your business and want your partner company to produce products for you, you may license the use of your registered trademark to your partner company to produce the products.

・When you want to use a trademark that has already been registered, and you want to obtain a license to use the registered trademark.

Type of license

What exactly is a license agreement? I wonder if there are several types of licenses. If you know, Mr. DX, could you give us an overview of license agreements?
A license agreement can be either an exclusive right to use or a non-exclusive right to use. An exclusive right to use is a right that only the holder of the exclusive right to use may use the registered trademark within the scope specified in the act of establishment. On the other hand, a non-exclusive right to use may be granted to multiple persons within the scope specified in the act of establishment. (There is also an “exclusive non-exclusive license” that grants a non-exclusive license to only one company, etc.) Registration is a requirement against third parties. Without registration, if the trademark owner changes, i.e., if the trademark owner transfers the trademark right, it is not possible to oppose the new trademark owner, etc. In this case, the use of the registered trademark would be an infringement of the new trademark owner’s trademark rights.
I see there are many different rights to use a registered trademark. Thanks for letting me know.

How do I register and apply for a license?

To explain the process of a license agreement, first, a trademark license agreement is concluded between the parties concerned. Specifically, the licensed trademark is specified, and the scope of products, etc., in which it may be used, the regions in which it may be used, the period during which it may be used, the license fee, etc. are determined. Procedurally, the establishment of an exclusive right to use or a non-exclusive right to use is possible through an agreement between the parties concerned and does not require permission from the JPO.

In the case of an exclusive right to use, an application for registration of establishment of exclusive right to use, and in the case of a non-exclusive right to use, an application for registration of establishment of non-exclusive right to use should be written. After confirming the contents, submit the application to the JPO for filing.

Supervisory Responsibility of the Trademark Holder

The holder of trademark right bears considerable supervisory responsibility for the holder of exclusive right to use or non-exclusive right to use.

If these use rights holders misuse the trademark in a way that causes misidentification of quality or confusion of origin (including inferior quality), the entire trademark right will be revoked unless the trademark owner was unaware of the fact and took reasonable care.

Because licensing agreements can be time-consuming and expensive, we recommend that you search for your product’s name to ensure that it is not registered and register your trademark before doing business. AmazingDX is a new trademark application search service that saves you time and money. You can rest assured that AmazingDX is a service provided by a leading international patent firm with extensive experience. We are also available for related information and general customer consultation and questions.

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Supervisor for the article:
大阪法務戦略部長 八谷 晃典
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