Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

No “Letter of Consent” system

The Japanese trademark system applies the first-to-file system and an examiner examines the similarity between a prior registered trademark and a trademark in a later application by ex officio.  There is no “Letter of Consent” system in Japan.  Therefore, when an examiner rejects an application on the ground that its trademark is similar to a prior registered trademark, a letter of consent will not be able to overcome the rejection. 
This applies even to a parent and subsidiary companies or companies in the same group.

“Assign-Back” procedure

In the above situation, a so-called “Assign-Back” procedure can be one of the loopholes.  In this procedure, an applicant assigns its application to the holder of a prior registered trademark (cited prior trademark in the rejection).  After the trademark in the application is registered, the newly registered trademark will be assigned back to the original applicant.

However, this procedure cannot be successful if the holder of a prior registered trademark (the senior holder) does not agree to take such procedure. 
Alternatively, if the senior holder agrees to take the procedure, it has to be noted that when the later trademark is registered, this trademark will be an obstacle for a new trademark application by the senior holder in the future.

Our comments

Although “Assign-Back” procedure is sometimes considered as a substitute for “Letter of Consent”, there will be always risks as mentioned above.  “Assign-Back” has to be adopted as a last resort.


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HIROTA, Miho
AIGI Intellectual Property Law Firm