I filed a new trademark application in Japan in the name of my company before. But, I have just received the office action to reject the application due to the similar prior trademark of my parent company.
I don’t understand why my application should be rejected by my parent company’s trademark and how I can overcome such rejection.
What should I do?
That’s because the owner of your application is different from that of the prior trademark.
But, the owner of the prior trademark is my parent company. As you may know, it is usual that a subsidiary uses a trademark which is similer to its parent company’s one.
In addition, there would be the case that there is no problem even if the confusion between the companies is happened.
However, the Trademark Law prescribes that a mark which is identical/similar to a prior mark of “others” shall be rejected to be registered. And, a subsidiary and its parent company are not the same legal entity.
So, examiners in the JPO have to reject in principle.
Then, don’t we have any ways to overcome such rejection?
The first one is so-called “Assignment-back” strategy.
It was introduced in the below post, so you can check it.
The “Assignment-back” strategy can be used for achievement of co-exsisting between completely different entities, right?
Then, it is natural that the strategy can be done for parent-subsidiary relationships too.
What is the second one?
Examiners in the JPO shall not rejected your trademark due to your parent/subsidiary company’s prior trademark provided that you can prove the followings:
- The cited prior mark’s owner is under control by the Applicant; or
- The Applicant is under control by the cited prior mark’s owner; and
- The cited prior mark’s owner consents to the registration of the applied mark
I will try to prove them to overcome the objection!