Similarity Refusal – 4条1項11号の拒絶理由につき動画を公開しました

Similarity Refusal (Article 4.1.11)

In this video, I am going to talk about the refusal based on a similarity of the trademarks. Just to note, this is the refusal under the article 4, paragraph 1, item 11 of the Japanese Trademark Law. I will then explain the possible ways to overcome the refusal. And at the end of the video, I will mention one of the Japan-Specific strategies to resolve the prior trademark issue.

The Japan Patent Office issues a refusal if they find any prior trademark that is confusingly similar to the trademark applied for.

The simplest way to overcome this refusal is to delete the conflicting goods and services from the list of designated goods and services. i believe this is self-explanatory and as you are aware, you do not want to take this option if the conflicting goods and services are related to the important part of the applicant’s business.

If the applicant does not wish to narrow down the scope of protection, then the options would be as follows:

Option 1: Filing an Argument

The first option is filing an argument to insist that the trademarks are dissimilar. The similarity of the trademarks are determined based on three factors:

  • appearance
  • meaning
  • pronunciation

The JPO tends to place more importance on the pronunciation than appearance and meaning, while the trademark is still seen as a whole.

How the trademarks are pronounced in Japanese could be tricky sometimes. For example, a letter “R” and “L” could produce same sounds in Japanese. We can advise you how the trademarks could be similar or dissimilar based on the pronunciations.

So when the pronunciations are considered similar, it would be difficult to overturn the refusal by insisting the trademarks are dissimilar. However, if the case is brought to the appeal board examination, and if the appearance and meanings are significantly different, the trademarks could be considered dissimilar despite the similarity of the pronunciations. If the trademark is very important to the applicant’s business, and the applicant strongly wishes to obtain the trademark rights, please let us know. We could provide our professional comments on the chances of overturning the refusal.

Option 2: Cancellation Action based on Non-use

The second option is filing a cancellation action against the prior trademark. If the prior trademark has not been used for the last 3 years in Japan, then a cancellation can be requested to the JPO. Unless the owner of the prior trademark registration proves that the trademark has been used in the last 3 years, then the registration could be cancelled.

The examination of the application would be on hold until the decision on the cancellation trial is made. Once the prior trademark is cancelled, the refusal is resolved, and the application will be allowed for registration.

Option 3: Negotiating Assignment and Assign back

The last option is negotiating the Assignment and Assign back.

You are probably familiar with the assignment. If the prior trademark is assigned to the applicant, both trademarks would belong to the same entity. There would be no risk of confusion and the refusal could be resolved.

Now I will explain what an “Assign Back” is, as we receive a lot of questions from our clients in various countries. This is a strategy taken here in Japan for the refusal based on a prior trademark since the consent agreement is not a valid strategy in our practice.

The applicant first transfer the current application to the owner of the prior trademark registration, and then the trademark will be allowed for registration. After the allowance, the owner of the prior trademark registration will assign the application back to the applicant. This going back and forth procedure succeeds only if the owner of the prior trademark registration agrees to take such procedure.

We have a lot of experiences and successful cases in the past. So please let us know  before giving up to accept the refusal.

We hope that our video helped you in any way. We have also published another video where I share the two major reasons for refusal in Japan. We will put the link below if you are interested.

If you ever need assistance with Japanese applications, please feel free to contact us. We would also be happy to make a video to answer your questions. So please also let us know if you have anything you would like us to talk about.

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