There have been changes to the trade marks law in Japan and the Republic of Korea that should prove helpful for parties to negotiate the trade mark registration systems of these countries.
Traditionally, the Trade Marks Offices in both countries have taken a very strict view in examining trade marks. Both offices examine on relative grounds (for prior rights) and regularly cite earlier registrations as bars to registration.
Unlike in most other countries that also examine on relative grounds, these Offices have not accepted consent as a way to overcome earlier rights. These have been a common way to overcome such objections in other countries as:
- The parties are not in commercial conflict and so an earlier rights holder has been content to issue consent;
- There already exists a broader co-existence or prior rights agreement that allows for the issuing of consent;
- Trade marks can be owned by subsidiary or related companies and consents can then be issued instead of recording assignments and consolidating ownership (there can be reasons that prevent assignment or make it undesirable).
In Japan and Korea, a labyrinthine “assign back” practice evolved where an application would be assigned to an earlier rights holder and, once the objection was overcome, the application could be transferred back to the original applicant.
The law amendments introduced in Japan on 1 April and to come into force in Korea on 1 May, change this and consents will become available in both countries. In Japan this is only for applications (including International designations) filed on or after this date, but in Korea for any applications pending on that date.
Letters of Consent will still not be accepted for identical marks covering identical goods or services.
Japan has set out further guidance on consent requirements that go beyond the (brief) amended article in their law. Their new examination guidelines make it clear that evidence must be provided in addition to a Letter of Consent. This evidence is to convince the Examiner that there would be no likelihood of confusion between the marks at this time and in the future.
What the evidence needs to show will be assessed on a case-by-case basis. For example, the closer the marks are, the stronger the evidence would need to be that there would not be a likelihood of confusion. Submitting a copy of a co-existence or prior rights agreement (if you are happy this could be available to the public) is likely to be helpful if it sets out how the parties will avoid confusion.
These developments are welcomed but caution should be taken that consent will not be a given and we can expect that Examiners will continue to take a fairly conservative approach.
