Refused for a Similar Trademark in Japan? Article 4(1)(xi) Explained by a Japanese Patent Attorney

"The Japan Patent Office says our mark is similar to someone else's. What does that mean?" "Our brand is registered at home — why was it refused in Japan?"

One of the most common reasons a trademark is refused in Japan is Article 4(1)(xi) of the Japanese Trademark Act: the mark is similar to an earlier registered mark. In this article, Japanese Patent Attorney Toru Kano of BrandAgent explains how similarity is judged in Japan and what foreign applicants can do when they receive this refusal.

What is Article 4(1)(xi) of the Japanese Trademark Act?

Article 4(1)(xi) prohibits the registration of a mark that is identical or similar to an earlier registered trademark (or an earlier-filed mark that later becomes registered), when it is used for identical or similar goods or services.

Both conditions must be met. A similar mark for completely unrelated goods is not refused under this article, and an identical mark is not refused if the goods and services are dissimilar.

Japan is a first-to-file country. Whoever files first in Japan generally wins, even if your brand has been used for years in China, Korea or elsewhere. A registration in your home country does not protect you in Japan.

What is a "cited mark"?

When the examiner refuses your application under Article 4(1)(xi), the Office Action (notice of reasons for refusal) lists the earlier registered mark that blocks yours. This is called the cited mark. The cited mark may be a Japanese registration or an international registration designating Japan under the Madrid System.

The first step in any response is to analyze the cited mark accurately: its exact form, its registered goods and services, its owner, and whether it is actually being used in Japan.

How is similarity of marks judged?

The JPO compares marks from three angles and then makes an overall judgment, taking into account how the goods are actually traded.

① Appearance

How the marks look. Strings of letters that are very close — for example "ABC" and "ABCD" — may be found similar in appearance.

② Sound (pronunciation)

How the marks are read aloud in Japanese. In practice, sound is often the decisive factor. Marks that differ only in a final sound — such as "Raito" and "Raitoh" — may be treated as similar. Note that an English word and its katakana form (e.g. "LIGHT" and "ライト") are read the same way in Japan, so a katakana registration can block an English mark, and vice versa.

③ Meaning (concept)

What the marks mean. Different words with the same meaning — for example "SUN" and "太陽" (Japanese for "sun") — can be found similar in concept. This matters for brands that combine an English word with Chinese characters.

The goods and services must also be similar

Article 4(1)(xi) only applies when the goods or services are also identical or similar. Clothing and clothing are obviously similar, while clothing and restaurant services are usually considered dissimilar.

In Japanese examination, the similarity group codes (e.g. 17A01) assigned to each item of goods and services are an important reference. Items sharing the same code are presumed similar, even if they fall in different Nice classes. The codes are not applied completely mechanically, however; the nature of the goods and actual trade practices are also considered.

Cases that are often refused under Article 4(1)(xi)

• Short word marks that differ from an earlier mark by only one letter or the ending
• English marks whose Japanese reading is the same as an earlier katakana mark (or vice versa)
• Coined words that still sound close to an earlier mark when read in Japanese
• Very broad lists of goods and services that overlap with the cited mark

Short marks are particularly risky: the shorter the mark, the less a one-letter difference helps to distinguish it.

How to respond to a 4(1)(xi) refusal

A refusal is not the end. If you have no domicile or business office in Japan, the response must be filed through a Japanese patent attorney — this applies to direct filings and to Madrid designations (provisional refusals) alike. The response deadline is short, so please contact your attorney as soon as you receive the notice.

① Argue non-similarity in a written opinion

We file a written opinion explaining why the marks are not similar in appearance, sound or meaning, or why the goods are not similar. This works best when there is a clear difference that the examiner may have underestimated.

② Amend (narrow) the goods and services

If the overlap concerns only some items, deleting or narrowing those items can remove the refusal. This is often the fastest and most practical solution, especially when the overlapping goods are not important to your business in Japan.

③ Challenge the cited mark itself

If the cited mark has not been used in Japan for three or more consecutive years, you can file a non-use cancellation trial. If it should never have been registered, an invalidation trial may be possible. Once the cited mark disappears, the refusal against your application is resolved.

④ Obtain consent from the owner of the cited mark

Since April 2024, Japan has a consent system (Article 4(4)). If the owner of the cited mark consents and there is no likelihood of confusion, your mark can be registered. This is useful, for example, when the cited mark belongs to a group company or a business partner.

Practical points

The best protection is a prior search before filing. If you instruct BrandAgent to file, the prior trademark search is free of charge, and we will tell you in advance whether there are similar earlier marks in Japan.

BrandAgent's fee for an Office Action response: JPY 25,000 (excluding Japanese consumption tax, where applicable). With more than 4,000 applications filed, every case is handled personally by a licensed patent attorney, not by unqualified staff.

FAQ

• Q. Is a 4(1)(xi) refusal common?
  A. Yes. It is one of the most frequent reasons for refusal in Japanese trademark examination.
• Q. Does a refusal mean our mark can never be registered?
  A. No. Many marks are registered after a written opinion, an amendment of the goods and services, cancellation of the cited mark or consent.
• Q. Our mark differs by one letter. Is that enough?
  A. Not necessarily. For short marks or marks that sound alike in Japanese, a one-letter difference may not be enough.
• Q. We received a provisional refusal for our Madrid designation. Can we respond ourselves?
  A. No. A holder without a domicile or office in Japan must respond through a Japanese patent attorney. We can handle the response in English or Chinese.

Summary

Related articles

• How Japan Judges Trademark Similarity: Appearance, Sound and Meaning Explained
• Japan's Trademark Consent System (Since April 2024): Requirements, Documents and Limits for Foreign Applicants
• Japanese Trademark Office Action (Notice of Reasons for Refusal): Common Grounds and How to Respond
• Trademark Search in Japan: How to Check Prior Marks Before Filing (and What People Miss)