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What happned?
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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?
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That’s because the owner of your application is different from that of the prior trademark.
![](https://i2.wp.com/fumitakahijino.com/wp-content/uploads/2017/07/Image.png?w=728&ssl=1)
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.
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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.
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Then, don’t we have any ways to overcome such rejection?
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The first one is so-called “Assignment-back” strategy.
It was introduced in the below post, so you can check it.
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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?
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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
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I will try to prove them to overcome the objection!