1. Implementation of a Letter of Consent Policy
According to the Japanese Trademark Law it is not possible to register a trademark deemed similar to a mark that is already registered (Article 4 (1)(xi)). Until now, the Japanese practice did not allow for similar marks to be registered even if the applicant had consent from the prior rightsholder. However, this amendment will allow for the adoption of a Letter of Consent policy, and the JPO will permit registration of a mark by consent as long as the marks in question will not cause confusion among consumers and traders. The likelihood of confusion will be determined by the JPO Examiner, and if the marks are deemed confusing the submission of a Letter of Consent may not be sufficient to overcome a reason for rejection involving the citation of a prior mark.
2. Trademarks Including People’s Names
Currently, registration for a trademark that includes the name of another person (first and last) cannot be obtained without the consent of the person or people with the same name, which is often logistically impossible (Article 4 (1)(viii)). If the Examiners found anyone with that same name as that of the applied-for trademark, to date they would issue an Office Action requesting submission of consent from all persons with that name. However, after this amendment takes effect, if the same-named person is not already well known or in some way already famously associated with the goods/services (or field) in question, the JPO will no longer demand submission of authorization. This amendment is in response to many complaints, particularly from the fashion design industry, where designer’s names are commonly used as trademarks.
3. Simplification of Declarations Regarding the Exception to Lack of Novelty of Design
Under the Design Act, in principle, if a design is published before the application is filed, it cannot be registered. However, if a declaration is submitted within one year from the publication, it will be treated as an exception that the design was not published. In the past, when a design creator, etc. published a design multiple times, it was necessary to submit a certificate for each of the multiple times. With this amendment, only a single submission will be necessary.
4. Imitations Prohibited in the Metaverse
The Unfair Competition Prevention Law prohibits the act of making a dead copy (imitation of another person’s product) within three years of its sale/release (Article 2 (1)(iii) ). However, since data does not inherently have a “form”, until now it was not clear whether or not this regulation would apply to dead copies of fashion and/or product designs in the so-called “Metaverse.” However, the upcoming revision will make it clear that this the scope of this regulation will include the Metaverse. In other words, due to the revision, the act of copying other people’s products on the Metaverse has been and will continue to be prohibited.