"Intent to Use" Refusals in Japan: Too Many Goods, Class 35 Retail and How to Respond

"Our Japanese application was refused because there is 'doubt about our intention to use the mark'. What does that mean?"
"We copied the goods list from our Chinese registration. Is that a problem in Japan?"

Foreign applicants often receive this type of Office Action, especially when the goods list is very long or covers many types of retail services. This article, by Toru Kano, Japanese Patent Attorney at BrandAgent (Kyoto), explains the rule, when it is triggered and how to respond.

Key points

In Japan a mark must be used, or intended to be used, by the applicant for the designated goods/services (Trademark Act Art. 3(1), main paragraph).
Refusals are likely when (1) several non-similar Class 35 retail services are designated, or (2) the goods/services in one class span 23 or more similar groups.
You can respond by submitting evidence of business (or a plan to start use) or by deleting goods/services.
A long goods list copied from a Chinese filing is a common cause.

What is the "intent to use" requirement?

Japanese law requires that a trademark be "used in connection with goods or services pertaining to the applicant's business". Use is not required at filing, but the applicant must actually use the mark or have a real intention to use it.

The purpose is to prevent one business from monopolising a huge range of goods it will never sell, which would block other businesses. Where the JPO has a reasonable doubt about the intention to use, it issues an Office Action and asks the applicant to confirm its business.

When the JPO raises a reasonable doubt

Pattern 1: Class 35 retail services are too broad

Case	Content
Individual designates general retail services	"Retail services for a variety of goods in clothing, food and daily necessities" — the kind of service provided by department stores and supermarkets — is unlikely to be provided by an individual.
Company designates general retail services	Refused if the JPO cannot confirm the company actually operates such a business.
Several non-similar retail services	e.g. retail of clothing, retail of cars and retail of medicines (different similar-group codes 35K01–35K99). One business rarely runs all these types of shops.

Pattern 2: 23 or more similar groups in one class

In Japan each item of goods or services has a "similar group code" (e.g. 21A01). If the designated goods/services in one class cover 22 or fewer similar groups, the requirement is treated as met. At 23 or more, the JPO asks for confirmation of business.

Items with the same code are counted once.
"Other" codes (such as 40H99) are counted separately if the items are not similar to each other.

A Chinese goods list that covers almost every subclass of a class often exceeds 22 groups in Japan. It is worth checking the count before filing.

How to respond, option 1: submit evidence

You file a written argument with evidence, showing for each similar group that you run, or plan to run, the business.

If you already sell the goods

Catalogues, leaflets or product pages showing the goods
Photos of the store or products
Transaction documents: orders, delivery notes, invoices, receipts
News or online articles describing your business

Evidence of business outside Japan (for example in China) can also show that you deal in the goods. Documents in Chinese or English need a Japanese translation.

If you have not started yet

An intention to start use within about 3–4 years after filing is accepted. Two documents are needed:

A statement, signed by the person responsible for the business, that you plan to start using the mark for the goods in a stated month and year
A business plan showing preparations (e.g. factory or store preparation, production or sales start dates)

These documents can be inspected by third parties, so confidential parts may be masked.

How to respond, option 2: delete goods/services

Refusal type	Amendment
23+ similar groups in one class	Delete items until 22 or fewer groups remain
Several non-similar retail services	Keep only one type of retail service

Deleting the goods you do not really need is often the quickest and cheapest solution.

When evidence can be omitted

If the same applicant already submitted evidence in an earlier Japanese application, you can refer to that application number and document instead of submitting it again. This also applies to other goods in the same similar group.

Mass filers

Applicants who file a very large number of applications (roughly 1,000 or more per year) and whose use cannot be confirmed — for example, those who mainly trade or license trademarks — are refused even if they submit a statement of intent.

Practical tips before filing

Do not copy the whole Chinese goods list; choose what you will really sell in Japan
Count the similar groups in each class and stay at 22 or fewer
In Class 35, avoid designating several unrelated types of retail service
Keep product pages, invoices and photos ready in case they are requested

FAQ

Q. Can we register a mark in Japan before we start selling there?
A. Yes. If an Office Action is issued, you can submit a statement of intent to start use within about 3–4 years and a business plan.

Q. How many goods can we list in one class?
A. The number of items does not matter as such; what matters is the number of similar groups. Up to 22 groups is treated as acceptable.

Q. Can we use evidence of sales in China?
A. It can help show that you deal in the goods. Submit it with a Japanese translation.

Q. Which is better: evidence or deletion?
A. If you do not need some items, deleting them is faster and cheaper. If the goods are important, submit evidence.

Planning to protect your brand in Japan?
Tell us your mark and your products — we will reply with the classes you need and a fixed quote, free of charge.

BrandAgent Patent Office (Kyoto, Japan)
Toru Kano, Japanese Patent Attorney

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