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On April 7, 2025, the Japan Patent Office (JPO) registered the first trademark utilizing the “consent system”. The “consent system” is a system for allowing the registration of trademarks that are identical with or similar to a prior registration provided that the applicant has the consent of the prior trademark registration owner and there is not risk of confusion between both trademarks. This system was introduced by the revision to the Trademark Act enacted on April 1, 2024, and applies to applications filed on or after that date.

At present, the following trademark (“Hari”, a sake produced by Shata Shuzou Co., Ltd.), which was filed with the consent of a prior registration owner, has been registered as the first case to apply the consent system.

Trademark registered by applying the consent system

Applicant	Application No.	Trademark	Designated service relating to application of consent system
Shata Shuzou Co., Ltd. (Hakusan-shi, Ishikawa Prefecture)	2024-34144		Class 33: “refined sake, shochu”, etc.

Prior registration owner giving consent

Prior registration owner	Trademark Reg. No.	Trademark	Designated service of subsequent trademark relating to application of consent system
Shaddy Co., Ltd. (Minato-ku, Tokyo)	5991116		Class 35: “provision of benefits for customers conducted in business of retail or wholesale of alcohol”

(Source: Ministry of Economy, Trade and Industry, News Releases, April 7, 2025)

Overview

In the case in question, the applicant (Shata Shuzou Co., Ltd.) and prior registration owner (Shaddy Co., Ltd.) signed agreement/consent forms. The agreement form explicitly states using one trademark only for sake labels and the latter and the other only for gift catalogs, and that they would be used to avoid confusion. As such, it was determined that there was no risk of confusion, and the registration was permitted. Furthermore, the applicant submitted petition and agreement forms and the like together with a petition without waiting for the Notice of Reasons for Rejection (the applicant does not specifically mention the similarity of the trademarks). The documents of the consent system can be submitted prior to filing the application and even before the Notice of Reasons for Rejection. An example format of an agreement/consent form has been published by the JPO, but the current examples are for reference only (see Trademark Examination Guidelines (42.400.02)). This case will also serve as a reference example.

The following documents were submitted for this particular case.

Petition

The applicant submitted documentation relating to an assertion of Trademark Act Article 4(4) (consent form, agreement form, and documentation relating to each individual business (copies of each individual website page)) together with a petition after filing, without waiting for a Notice of Reasons for Rejection. Furthermore, they listed each individual business concisely based on the submitted website pages.

Consent Form

The applicant submitted a consent form that had been exchanged with the prior registration owner (Shaddy Co., Ltd.). This form was based upon the description example published by the JPO. (See Trademark Examination Guidelines (42.400.02))

Agreement Form

The applicant submitted an agreement form that had been exchanged with the prior registration owner (Shaddy Co., Ltd.).

Both parties agree to avoid “the risk of causing confusion” as follows:

(1) A shall give B consent to obtain a trademark registration for the trademark application.

(2) B shall use the following* as a label for attaching to products, and shall also endeavor to prevent confusion arising over use of the trademark application in the instructions.

(3) A shall use the cited trademark in gift catalogs, and B shall use the trademark application only on designated products.

Reference: Manner of use of the applicant’s trademark

* A label similar to this one was submitted

(Source: https://shopping.kimijimaya.co.jp/view/item/000000008345?srsltid=AfmBOooeWuXLJjn52KA51unbRlK14pXQEVsae6H4qKRgGujlaE5GPtMu) (42.400.02)

Reference: Manner of use of trademark in the Shaddy gift catalog

(Source: https://catalog-gift-guide.com/repute/item.php?id=500031501)

The description examples of “agreement forms” currently published by the JPO is as follows.

Agreement Form (Description Example 1)

(1) A shall give B consent to obtain a trademark registration for the trademark application.

(2) A shall not use the cited trademark without adding the name of the company given in Appendix 2, and B shall not use the trademark application without adding the house mark given in Appendix 3.

(3) Of products designated in Class 9 “computer software”, A shall use the cited trademark only for medical computer software, and B shall use the trademark application only for the designated products.

(4) …

Agreement Form (Description Example 2)

(1) A shall give B consent to obtain a trademark registration for the trademark application.

(2) A shall not use the cited trademark without adding the name of company A, and B shall not use the trademark application without adding the specified house mark.

(3) Of products designated, A shall use the cited trademark only for the specified products, and B shall use the trademark application only for the designated products, such that A and B shall avoid using the trademark application and the cited trademark for identical products. B shall not use the trademark application without adding the house mark.

(4) …

(Source: Trademark Examination Guidelines (42.400.02))

Naoko TASHIRO