We are pleased to share with you recent updates in Japan’s trademark practice that may be relevant to clients with business or brand interests in Japan.

１．First Registration Granted Under Japan’s New Trademark “Consent System” (April 7, 2025)

The first trademark registration under Japan’s newly introduced “Consent System” (Trademark Act, Article 4, Paragraph 4), which came into effect through the 2024 amendment to the Trademark Act, has been confirmed.

Under this system, a later trademark application that is similar to a prior registered trademark may be granted registration if (i) the owner of the prior trademark consents to the coexistence, and (ii) the examiner determines that consumers are unlikely to be confused.

Case Summary
Prior Trademark Registration: Registration No. 5991116 “玻璃＼ＨＡＲＩ”
　Owner: Shaddy Co., Ltd.
　Designated Services: Class 35 “Retail and wholesale services for alcoholic beverages”

Later Trademark application: Appl.No.2024-34144 “玻璃”
　Applicant: Kurumata Shuzo Co., Ltd.
　Designated Goods: Class 33 “Sake, shochu (Japanese spirits), etc.”

The owner of the prior mark is engaged in catalog-gift merchandise retailing, whereas the owner of the later mark operates a Japanese-sake brewing business.

Despite the high similarity between the two marks in terms of Chinese characters and pronunciation, the applicant promptly submitted the following documents after filing:
・A written consent from the prior trademark owner
・An agreement between both parties outlining specific measures to avoid confusion
・Supplementary materials explaining the nature of each party’s business activities

On this basis, the JPO examiner found no likelihood of confusion and allowed the application without issuing a provisional refusal.

This case is expected to serve as a benchmark for future applications seeking to utilize the Consent System, helping to clarify the standards and conditions under which the system may be applied.

２．Clarification of Examination Guidelines for Metaverse-related Goods and Services (effective January 6, 2025)

In January 2025, the Japan Patent Office (JPO) revised its Examination Guidelines for Trademarks to clarify the classification and acceptable descriptions of goods and services used or provided in virtual environments (e.g., the metaverse).

Key Points:
Virtual Goods (e.g., avatars, virtual clothing):
These are no longer classified under the product’s physical class, but rather as follows:

Class 9: “Downloadable virtual clothing”
Class 41: “Providing online images for displaying clothing in virtual environments”

Retail and software services related to virtual goods:

Class 35: “Online retail services for downloadable virtual clothing”
Class 42: “Providing computer programs on data networks for displaying clothing in virtual environments”

Avatars can be designated as:
Class 9: “Downloadable avatars”

Note: Generic expressions such as “virtual goods” are not acceptable. Applicants must specify the type of goods, e.g., “clothing.”

Services provided in virtual environments may be designated under the same classes as their real-world counterparts, if the purpose and outcome are the same.

Examples:
Class 35: “Marketing through product placement for others in virtual environments”
Class 41: “Presentation of music concerts in virtual environments”

However, if the purpose or outcome differs from real-world services, designation under the same class is not permitted.

Incorrect example:
Class 43: “Provision of food and beverages in virtual environments” (Not acceptable)

Acceptable alternative: Class 41: “Simulated restaurant services provided in virtual environments for enterjunitainment purposes”

If you have any clients who may be interested in filing trademark applications in Japan based on these systems or would like further information on the above topics, please feel free to contact us.