#本文仅代表作者观点, it does not represent the position of IPRdaily, and reprinting is prohibited without the permission of the author#
"This article compares the implementation details, similarities and differences between the two countries' consent systems, with a view to providing a reference for trademark owners to obtain trademark registration in Japan and South Korea."
Source: IPRdaily Chinese Network (iprdaily.cn)
Author: Tang Wan, China Council for the Promotion of International Trade Patent and Trademark Law Firm
In the process of adjudicating a trademark registration application, if there is a prior identical or similar trademark, the applied trademark will often be rejected. In order to overcome the refusal, the applicant may choose to submit a consent letter issued by the prior trademark owner or a coexistence agreement signed by both parties (hereinafter collectively referred to as the "coexistence consent document") with a view to achieving the coexistence of the same or similar trademarks[1]. However, the acceptance of coexistence consent documents varies from country to country. The coexistence consent system is a balance between the disposition of the private rights of trademark owners and the protection of the rights and interests of the public, and some countries represented by the United Kingdom and New Zealand fully respect the disposition of private rights by market entities and fully accept the coexistence consent documents. Some countries, such as the United States, Singapore, and China, have tried to balance private rights and public interests, and the acceptance of coexistence consent documents needs to be premised on avoiding confusion.
In June 2023, Japan introduced a trademark coexistence consent system through an amendment to the Trademark Law, which came into effect on April 1, 2024. This marks the end of the long-awaited trademark coexistence consent system for the Japanese public as a clear legal provision. Previously, in the event of a prior rights conflict, the only way to achieve the coexistence of the applied trademark and the prior trademark was usually achieved in trademark practice was to "assign back". [2] Similarly, South Korea's amendment to the Trademark Act, which also came into effect on May 1, 2024, also introduces a trademark coexistence consent system. Prior to the entry into force of the amendment, it was also common for South Korea to adopt the method of "assign back" to overcome refusals based on prior rights conflicts. In the following, the author will compare the implementation details, similarities and differences of the coexistence consent systems in the two countries, with a view to providing a reference for trademark owners to obtain trademark registrations in Japan and South Korea.
1. Implementation time
The amendment to Japan's Trademark Law came into effect on April 1, 2024. Taking April 1, 2024 as the cut-off point, the coexistence consent system is not applicable to trademark registration applications filed before, and those filed on or after April 1, 2024 can be subject to the coexistence consent system. Sub-applications based on the division of trademark applications before April 1, 2024 are also not subject to this system.
The amendment to the Korean Trademark Act came into effect on May 1, 2024. Applications for trademark registration filed on or after the effective date of the amendment will be subject to the coexistence consent system. For previously filed applications for registration, including applications for designation of Korea through Madrid International Registration, as long as the application is valid for which a decision to approve the registration has not been made on May 1, 2024, the coexistence consent system will apply.
Compared with Japan's "one-size-fits-all" approach, South Korea's approach is more flexible. If a Korean trademark application is rejected before May 1, 2024 due to prior rights conflicts, the applicant can maintain the validity of the trademark application by extending the application or filing a review in advance, and obtain the coexistence consent document issued by the prior right holder before submitting it to the government.
2. Key points for the application of the coexistence consent system
In Japan, if you wish to overcome a refusal with a coexistence consent document, you need to state the reasons why the applied trademark and the cited trademark do not cause confusion, and explain that there is no confusion now and will not be in the future (e.g., the target consumer is different; Different sales regions; or the parties agree not to change the current way of use in the future). In general, the Japanese government will decide whether to accept the registration of a trademark for reexamination based on the following points:
1. Identification approximation;
2. The popularity of the trademark;
3. Whether the logo is a trade name;
4. The areas covered by the business of both parties;
5. Relevance of goods and services;
6. Actual use of trademarks.
If the applied trademark is the same as the cited trademark and the designated goods and services are the same, there is a high probability that the Japanese government will consider that there is a high probability of confusion and will not accept the coexistence consent document.
Korea's coexistence consent system also requires clarification on how the parties will avoid confusion between the trademarks. At the same time, it is only applicable to trademarks with certain differences in trademark logos or designated goods and services, and if it is the same trademark on the same goods and services, it is not possible to overcome the refusal of citing prior rights through a coexistence consent document. In fact, the same trademark designating the same goods/services cannot be registered in Korea, even if the right holder is the same, because the Korean trademark law does not allow the same right holder to hold two identical trademarks.
As can be seen from the above points of application, although there are differences in the implementation rules, the amendments to the Trademark Laws of Japan and South Korea still try to balance private rights and public interests, and accept coexistence consent documents submitted by subsequent applicants only if certain conditions are met.
3. Remedies after coexistence
Is there any possibility of remedies for similar and highly similar trademarks that have benefited from the aforesaid coexistence consent system if actual confusion arises in actual operation? Both countries have provided for this.
In Japan, if the trademark of right holder A is approved for registration based on the coexistence consent document issued by right holder B, in the actual use of the trademark in the future, right holder A or B may request the other party to attach other marks to the trademark in order to avoid confusion if the other party believes that the other party has harmed its commercial interests. If the right holder A or B uses the trademark in bad faith (for the purpose of unfair competition) and actual confusion occurs, any person can apply for cancellation of the registered trademark.
In this case, a similar provision applies to the case whereby the prior right holder may revoke a subsequent trademark that has been approved for registration based on a coexistence consent document if the right holder improperly uses the trademark and causes actual confusion.
It can be seen that Japan has stricter requirements for the actual use of similar trademarks after the coexistence of similar trademarks, stipulating that "anyone" has the right to revoke trademarks that cause confusion and attach to the goodwill of others.
In any case, the fact that the coexistence consent system is clearly enshrined in law is good news for trademark owners who are interested in entering the Japanese and Korean markets. This relaxes the requirements for the registrability of trademarks, reflects the actual transaction needs of market entities, and reduces the burden on subsequent trademark owners who have obtained the consent of the cited trademark owner to obtain trademark registration.
Exegesis:
[1] "Trademark coexistence" refers to the use of identical or similar trademarks by two different market entities without necessarily affecting their respective business activities.
[2] "Assign back" means that if the trademark applied for registration is rejected due to the prior trademark of another person, the trademark applied for registration can be transferred to the prior trademark owner in advance. After the trademark application is approved for registration, the prior trademark owner will transfer the trademark back to the original applicant.
(Original title: Japan and South Korea introduce trademark coexistence consent system)
Source: IPRdaily Chinese Network (iprdaily.cn)
Author: Tang Wan, China Council for the Promotion of International Trade Patent and Trademark Law Firm
编辑:IPRdaily赵甄 校对:IPRdaily纵横君