Madrid System · Japan
A provisional refusal is not a final decision denying trademark protection in Japan. We review the concerns raised by the Japan Patent Office (JPO), identify the scope of protection important to your business, and work with you to develop an appropriate response strategy.
When an international registration designates Japan, the JPO examines the mark under the Japanese Trademark Act. Registration with the World Intellectual Property Organization (WIPO) does not, by itself, guarantee protection in Japan.
If the JPO finds grounds for refusal, it issues a notification of provisional refusal through WIPO. An appropriate response takes into account both the grounds raised and the scope of protection that matters to the holder’s business.
In Japan, a provisional refusal covers the entire application even when the grounds concern only some of the goods or services. It is therefore important to review each ground and identify the goods and services actually affected.
The initial response period is three months from the date the JPO issues the notification. An extension may be available, depending on the status of the case. Please contact us early so we can confirm the applicable deadline and procedure.
In Japan, it may be possible to request an extension after the initial response period has expired. The available options depend on the status of the case. Send us the IRN so we can review the current position and determine whether a response is still possible.
There may be ways to overcome a refusal, but an immediate amendment is not always the best approach. We first consider the scope of protection your business needs, then discuss the appropriate response.
We work to resolve these objections by clarifying the identification of goods and services in line with JPO examination practice. Our Japanese patent attorneys communicate with the JPO in Japanese, and we explain the proposed amendments in English to help ensure they reflect your intentions without unnecessarily narrowing the scope of protection.
In relation to the designated goods or services, a mark may be considered to describe their quality, intended purpose, or other characteristics, or to be likely to mislead consumers about the quality of the goods or services. These objections can be more challenging to overcome. We have extensive experience assessing how marks are perceived in Japan and resolving such objections. Before undertaking substantive work, we assess the prospects and propose arguments, supporting evidence, and amendments where appropriate.
We compare the marks and their respective goods and services under Japanese examination practice. Where appropriate, we develop arguments supported by relevant JPO appeal decisions and court decisions. We also use examiner interviews and telephone discussions to clarify the issues.
The JPO may raise this issue in Madrid System applications designating Japan, particularly when the list of goods and services is broad. We discuss the holder’s business activities and plans, then recommend suitable evidence or other steps to address the issue without creating an unnecessary burden.
Our role goes beyond translating the notification or narrowing the list of goods and services. We first identify the scope of protection that matters to your business, then explain the practical options.
A holder with no domicile or residence in Japan generally needs a representative based in Japan to respond to the JPO. Our Japanese patent attorneys (benrishi) can handle these proceedings on the holder’s behalf.
When changes to the designated goods or services are needed, we can act as your Japanese representative and file arguments and amendments directly with the JPO. Another option is to request a limitation through WIPO using Form MM6, filed by the holder or representative recorded in the International Register, or through the competent Office. We first consider how to preserve as much of the scope of protection needed in Japan as possible. We then propose a strategy combining arguments, amendments, and discussions with the examiner as appropriate, and represent you before the JPO. If a limitation through MM6 is appropriate, we propose the wording and assist the recorded representative or other eligible party with the filing.
The work required depends on the grounds for refusal, the number of classes and cited marks, and whether amendments, supporting evidence, or additional proceedings are needed. After reviewing the case, we provide an estimate that separately identifies our professional fees and expected out-of-pocket expenses. An ordinary response to the JPO generally does not incur official fees. If official fees are required, for example for an extension of time, we specify their purpose and amount.
This page provides general information based on official guidance from the JPO and WIPO. The appropriate response depends on the specific notification and the status of the case. JPO · WIPO
Send us the IRN or your question. We will identify any issues that need prompt attention and explain the next steps.
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