"The JPO refused our trademark because it is similar to an earlier Japanese registration — but the owner is our business partner and does not object. Can we still register?"
Since April 1, 2024, the answer can be yes. Japan introduced a consent system (Article 4(4) of the Trademark Act): if the owner of the earlier registered mark consents, and there is no likelihood of confusion, a similar mark can coexist on the register. In this article, Japanese Patent Attorney Toru Kano of BrandAgent explains how the system works for overseas brand owners.
Key points of this article
- Two requirements: written consent from the earlier registrant and no likelihood of confusion.
- Applies to: applications filed on or after April 1, 2024 (including Madrid designations with an international registration or subsequent designation date on or after that day).
- Japan's version is "qualified": the examiner still checks for confusion even with consent.
- Limits: not available with accelerated examination; identical mark + identical goods is not accepted.
What is the consent system?
In Japanese examination, a mark that is identical or similar to an earlier registered mark, for identical or similar goods or services, is refused under Article 4(1)(xi). In real business, however, two companies can use similar names without any real risk of confusion — different industries, different sales channels, or companies in the same group.
Under the consent system, the later mark can be registered if:
- the owner of the earlier registered mark gives written consent, and
- the examiner finds that the two marks will not cause confusion.
For many foreign applicants this matters because consent agreements are common in China, the US, the EU and Korea. Until 2024, a coexistence agreement had no effect on Japanese examination. That gap has now been partly closed.
Japan uses a "qualified" consent system
Some countries accept a consent letter as enough on its own. Japan does not. Even with a signed consent, the examiner independently judges whether confusion is likely, considering:
- how similar the two marks are,
- how each mark is actually used (logo, house mark, additional wording),
- the trade circumstances — customers, distribution channels, industries and regions.
A registration in another country obtained through consent does not by itself prove that there is no confusion in Japan. The Japanese situation is assessed separately.
| More likely to be accepted | Less likely to be accepted |
|---|---|
| Different industries, customers and sales channels | Identical mark for identical goods/services (not accepted) |
| Use is clearly differentiated (logo, company name added) | Very similar marks used in the same channels |
| Group companies that agree on how each mark is used | Relying only on a foreign consent registration |
Being in the same corporate group is not enough on its own. An agreement to show the group relationship when using the mark is, however, a relevant factor.
Documents and procedure
The usual flow is:
- File the application (on or after April 1, 2024).
- Receive an Office Action citing the earlier mark under Article 4(1)(xi).
- Negotiate with the earlier owner and obtain consent.
- File a response with (1) the consent letter and (2) a document explaining why there is no likelihood of confusion.
- The examiner decides: registration or refusal.
If you already know about the earlier mark, the documents can be filed earlier, even at the time of filing. The JPO publishes templates for both documents in its Trademark Examination Manual. The consent must come from the owner of the cited registration. A consent letter written in a foreign language must be filed with a Japanese translation.
Madrid designations of Japan
International registrations designating Japan can also use the system if the international registration date (or subsequent designation date) is on or after April 1, 2024. To file the consent documents with the JPO, you need to appoint a Japanese representative.
Limits and pitfalls
Points to watch
- Filing date: applications filed before April 1, 2024 cannot use the system, even if still pending. Divisional applications from such parents are also excluded.
- Paris priority: an application filed in Japan on or after April 1, 2024 can use the system even if the priority application was filed earlier.
- No accelerated examination: an application relying on consent is not eligible for accelerated examination.
- Identical mark + identical goods: not accepted.
- Consent alone is not enough: prepare a real explanation of how confusion is avoided.
After registration
Marks registered through consent are marked as such in the official gazette and on J-PlatPat. Two safeguards remain after registration:
- Request to add a distinguishing indication (Article 24-4): if one owner's use threatens to harm the other's business, the other owner can ask for an indication that prevents confusion.
- Cancellation trial for improper use (Article 52-2): if one owner uses the mark for the purpose of unfair competition and causes confusion, anyone can request cancellation.
So a consent agreement should also cover how each party will use its mark in practice.
FAQ
- Q. If the earlier owner consents, is registration guaranteed?
A. No. Japan's system is qualified: the examiner must also find no likelihood of confusion. - Q. We have a coexistence agreement signed in China. Can we use it in Japan?
A. It can be a starting point, but the JPO needs a consent letter addressed to the Japanese situation (with a Japanese translation) and an explanation of why there is no confusion in Japan. - Q. Our application was filed in 2023. Can we use consent now?
A. No. Only applications filed on or after April 1, 2024 qualify. Filing a new application may be an option. - Q. Can we combine consent with accelerated examination?
A. No, an application relying on consent is not eligible for accelerated examination.
Summary
Key points
- Since April 1, 2024, consent from the earlier owner can overcome a similarity refusal in Japan.
- The examiner still checks for confusion — consent alone is not enough.
- Madrid designations from April 2024 onward qualify; a Japanese representative is needed.
- Not available with accelerated examination, and not for identical mark + identical goods.
Related articles
- Refused for a Similar Trademark in Japan? Article 4(1)(xi) Explained by a Japanese Patent Attorney
- How Japan Judges Trademark Similarity: Appearance, Sound and Meaning Explained
- Japanese Trademark Office Action (Notice of Reasons for Refusal): Common Grounds and How to Respond
- Non-Use Cancellation Trials in Japan: Requirements, Procedure and When You Can Win
Planning to protect your brand in Japan?
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BrandAgent Patent Office (Kyoto, Japan)
Toru Kano, Japanese Patent Attorney