The Trademark Act stipulates that the trademark should not be granted registration, being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration, unless the proprietor of the said earlier used trademark consents to the application.

The issues are whether the trademark licensing from the prior user might be deemed the prior user’s consents to the trademark registration application for the licensed trademark by the licensee and whether the situations that the prior user continues trademark licensing though notices such a trademark registration should be deemed implicit consents to such a trademark registration.

The Intellectual Property Court cited the opinions of the Supreme Court holding in 2016 that the trademark licensing or the continuous licensing after the notice of the authorized trademark registration cannot be deemed consents to the trademark registration of such a licensed trademark.  The IP Court points out that the consent to the trademark application should be explicit and specific.