Japanese Trademark Office Action (Notice of Reasons for Refusal): Common Grounds and How to Respond

"We received a notice of reasons for refusal from the JPO — is our trademark rejected?" "Our Madrid designation to Japan got a provisional refusal. What now?"

An Office Action is not the end of your application. In many cases the mark is registered after a well-prepared response. In this article, Japanese Patent Attorney Toru Kano of BrandAgent explains the common grounds for refusal in Japan, how to respond, and what overseas applicants need to watch for.

What is a notice of reasons for refusal?

A notice of reasons for refusal (kyozetsu riyu tsuchi, commonly called an Office Action) tells you that the examiner considers the mark cannot be registered as the application now stands, and explains why. It is not a final decision. The examiner is giving you the opportunity to argue or amend before deciding.

For a Madrid international registration designating Japan, the equivalent is a provisional refusal sent through WIPO. The grounds and the ways to respond are essentially the same.

The most common grounds for refusal

1. Similarity to an earlier mark (Article 4(1)(xi))

The most frequent ground. The examiner finds that an earlier registered mark is similar in appearance, pronunciation or meaning, and that the goods or services are also similar. In Japan, pronunciation (the katakana reading) carries particular weight.

2. Lack of distinctiveness (Article 3)

Marks that simply describe the goods, their quality or function, generic names, and common expressions may be refused because consumers would not see them as identifying one particular source.

3. Likelihood of confusion with a well-known brand (Article 4(1)(xv))

Even without direct similarity to a registered mark, a mark may be refused if consumers could mistake the goods as coming from, or being connected with, a famous brand.

4. Unclear goods/services description (Article 6)

Very common for foreign applicants and Madrid designations: the goods or services are worded in a way the JPO considers unclear, or they are listed in the wrong class. This is usually resolved by amending the description.

How to respond

Written arguments (opinion)

We argue, on legal and factual grounds, that the examiner's finding is wrong — for example, that the marks are not similar, the goods are not similar, the mark is distinctive, or there is no risk of confusion in actual trade. Some cases are resolved by arguments alone.

Amendment

We change the application to remove the ground — for example, by deleting the goods that overlap with the earlier mark, removing unnecessary items, or rewording unclear descriptions. When the conflict concerns only part of your list, narrowing it often leads straight to registration.

Other routes when an earlier mark blocks you

• Non-use cancellation: if the cited mark has not been used in Japan for three or more consecutive years, we can file a non-use cancellation trial against it.
• Consent: since April 2024, Japan has a consent system. With the earlier owner's consent, a similar mark may be registered if there is no likelihood of confusion.

Arguments or amendment — which to choose?

Deadlines and what happens if you do not respond

The response period is 40 days for applicants in Japan and, in principle, 3 months for applicants with an address overseas, counted from the date the notice is sent. An extension can be requested in some cases.

If no response is filed by the deadline, the examiner issues a decision of refusal. This formally ends the examination stage. It can still be challenged by an appeal against the decision of refusal, filed within three months, but an appeal takes longer and costs more than responding to the Office Action in time.

Forwarding notices across borders takes time. If an Office Action reaches you through another firm, contact a Japanese attorney as early as possible so that there is enough time to study the cited marks and prepare a response.

How likely is a response to succeed?

• Unclear wording, or conflicts limited to some goods: usually easy to resolve by amendment.
• Similarity to an earlier mark (4(1)(xi)): more difficult; depends on how close the marks and goods really are.
• Lack of distinctiveness (Article 3): varies widely depending on the mark.

Practical cautions

• Never miss the response deadline.
• Read the cited marks and the cited provisions carefully before choosing a strategy.
• Do not over-amend: deleting too much can leave the products you actually sell unprotected.
• Decide in advance which goods and services you must keep.

FAQ

• Q. Are Office Actions common in Japan?
  A. Yes. They are a normal part of trademark examination. Similarity (4(1)(xi)), distinctiveness (Article 3) and unclear goods descriptions are the most frequent.
• Q. Does an Office Action mean our mark cannot be registered?
  A. No. Many marks are registered after written arguments or an amendment.
• Q. What if we ignore it?
  A. A decision of refusal is issued after the deadline passes.
• Q. Our application was filed by another firm, or via Madrid. Can you respond?
  A. Yes. We can be appointed as your representative for the response. Send us the notice and we will reply with our view and a quote.

Summary

Related articles

• Refused for a Similar Trademark in Japan? Article 4(1)(xi) Explained by a Japanese Patent Attorney
• Refused for Lack of Distinctiveness in Japan? Article 3 of the Japanese Trademark Act Explained
• "Intent to Use" Refusals in Japan: Too Many Goods, Class 35 Retail and How to Respond
• Japan's Trademark Consent System (Since April 2024): Requirements, Documents and Limits for Foreign Applicants