Japanese Trademark Finally Refused? Appeal Against Refusal in Japan: Deadline, Fees and Options (2026)

"We answered the office action, but the Japan Patent Office has now issued a final decision of refusal. Is it over?" "Our local agent forwarded the refusal weeks after it was issued — how much time is left?"

For overseas brand owners, a final refusal in Japan often arrives at the worst moment: products are already on Amazon.co.jp, a distributor is waiting for the registration certificate, and the paperwork is in Japanese. The good news is that a decision of refusal is not necessarily the end. Japan offers an appeal against the decision of refusal, and there are several other routes that can still lead to a registration — or at least to protection for the most important goods.

In this article, Japanese Patent Attorney Toru Kano of BrandAgent explains what to do after a final refusal of a Japanese trademark application: the deadline, the official fees, what can still be amended, and when a divisional application, a consent or a fresh filing is the better choice.

Office action vs. final refusal: know which document you have

In Japan, the examiner first sends a notice of reasons for refusal (kyozetsu riyu tsuchi). You can respond with arguments and amendments. If the examiner is still not satisfied — or if no response was filed — the JPO issues a decision of refusal (kyozetsu satei). This is the final decision at the examination stage. From here, the only way to continue the same application is to request an appeal against the decision of refusal (kyozetsu satei fufuku shinpan), which is examined by a panel of appeal examiners at the JPO.

An applicant without a domicile or business office in Japan must handle the appeal through a representative in Japan — in practice a Japanese patent attorney (Benrishi). If you used another firm for the original filing, you can switch to a new attorney for the appeal; a new power of attorney is all that is needed.

The deadline: 3 months from service — with no extra time for overseas applicants

Under Article 44 of the Trademark Act, an appeal must be requested within 3 months from the date the certified copy of the decision of refusal was served. According to the JPO Appeals Handbook, this period is 3 months for both Japanese residents and applicants abroad. Unlike patent appeals, where overseas applicants receive an automatic one-month extension, there is no extension for trademark appeals.

Points that cause trouble for foreign applicants:

• The clock starts in Japan. It runs from service on your Japanese representative, not from the day your home-country agent forwards the document to you.
• Time-zone and holiday delays add up. If several agents are in the chain, ask for the exact service date in writing on the day you receive the refusal.
• A late appeal is generally not accepted. Treat the 3-month date as absolute and give instructions at least 2–3 weeks before it.

The full period list is in the JPO Appeals Handbook (jpo.go.jp, Japanese).

Official fees for an appeal

The official JPO fee for requesting a trademark appeal is JPY 15,000 + JPY 40,000 per class (see the JPO fee table).

*Official fees only. Attorney fees are separate.

The fee depends on the number of classes in the appeal. If the refusal only affects one class of a multi-class application, the JPO FAQ explains that you can file an amendment reducing the classes on the same day as the appeal request, and pay the appeal fee for the reduced number of classes. Deleting the class you do not need can therefore save JPY 40,000 per class.

What can you still amend at the appeal stage?

While the appeal is pending, you can still amend the designated goods and services to overcome the refusal. The JPO Trademark Examination Guidelines draw a clear line:

• Allowed: deleting or narrowing goods/services, correcting clerical errors, and clarifying unclear wording. A general term can also be replaced by specific items that fall within it.
• Not allowed: changing the mark itself (adding or deleting words or figures, changing colours), or changing or broadening the goods — even to similar goods. These are treated as a "change of gist".

In practice, many refusals based on an earlier similar mark (Article 4(1)(xi)) only concern part of the specification. Deleting the overlapping goods can remove the ground of refusal entirely. If you want a different version of the mark, that requires a new application.

Divisional application: save the goods that were not a problem

Sometimes you do not want to give up the refused goods, but you need a registration for the rest quickly — for example, for a marketplace brand program. A divisional application (Article 10) splits the application into two or more applications, each keeping the original filing date.

Under Article 10, division is possible while the application is pending in examination, appeal or retrial (or while a court action against a refusal decision is pending). After a final decision of refusal, the application is no longer in examination, so in practice the division is made together with, or after, the appeal request. A typical approach:

• Request the appeal, and divide the application so that the problem goods stay in one application.
• Delete the problem goods from the other application so that it can be registered without them.
• Continue arguing for the problem goods in the remaining appeal.

Each divisional application is a separate application with its own official fees, so check whether the cost is justified compared with simply deleting goods. Note that division is not available for international registrations designating Japan under the Madrid Protocol (Article 68-12).

Other routes to consider

Consent from the earlier mark owner (applications filed on or after 1 April 2024)

Japan introduced a consent system in Article 4(4). According to the JPO, a mark that conflicts with an earlier registered mark can be registered if (1) the owner of the earlier mark consents and (2) there is no likelihood of confusion between the two marks. The revised guidelines apply to applications filed on or after 1 April 2024. A consent letter alone is not enough — the JPO also checks the risk of confusion, so the evidence and the agreement need careful drafting.

Negotiation with the earlier owner

Where consent is not available, some applicants negotiate with the earlier owner — for example, purchasing the earlier registration or agreeing a structure in which both marks end up under common ownership. These arrangements depend entirely on the other party's cooperation and carry their own risks, so they need to be planned case by case.

Non-use cancellation of the cited mark

If the earlier mark has not been used in Japan, it may be vulnerable. Under Article 50, anyone can request cancellation of a registration that has not been used in Japan for 3 consecutive years by the owner or a licensee, and the owner bears the burden of proving use. If the cited mark is cancelled, the obstacle to your application disappears. An investigation of actual use in Japan is a sensible first step.

A fresh application

If the refusal is based on lack of distinctiveness (for example, a descriptive word), it may be more efficient to file a new application for a more distinctive version — such as the word combined with a logo — while the appeal on the original continues, or instead of it.

Madrid designations of Japan

If Japan was designated through the Madrid Protocol, the JPO first notifies a provisional refusal through WIPO. To submit arguments or amendments, a holder outside Japan must appoint a representative in Japan. According to the JPO Trademark Examination Manual, when the holder has no Japanese representative, the JPO serves its decisions directly on the holder — so a final decision of refusal may arrive by post at your head office, and the 3-month period starts from that service.

The appeal itself works in the same way as for a national application, and the designated goods can be amended while the appeal is pending. The main difference is that division is not available for Madrid designations, so if you want a quick registration for part of the goods, deleting goods (or filing a national application in Japan) is the practical option.

What improves the chances of success?

• Re-analyse the refusal, not just the previous response. Repeating the same argument rarely changes the outcome. Look for new angles: different overall impression, different pronunciation in Japan, actual trading circumstances.
• Bring evidence. For distinctiveness refusals, Japanese sales, advertising and media coverage matter more than use abroad.
• Combine the appeal with a narrower specification. Deleting the goods you do not sell in Japan often makes the argument much stronger.
• Run parallel tracks. A non-use cancellation or a fresh filing can progress while the appeal is pending.

If the appeal panel upholds the refusal, a court action can be filed against the appeal decision. According to the JPO Appeals Handbook, the period is 30 days from service of the decision, with an additional 90 days for applicants abroad. The action is brought before the Intellectual Property High Court.

How BrandAgent can help

We review the refusal, the cited marks and your sales plans in Japan, and recommend the most cost-effective route: appeal, appeal with amendment or division, consent, non-use cancellation or a new filing. Appeals and related procedures are quoted individually — please ask for a free quote. If a new application is the best route, our standard fees apply: JPY 25,000 per class at filing and JPY 25,000 per class at registration (excluding Japanese consumption tax), with a free prior search when you instruct us to file. We work in English and Chinese, and accept PayPal (in JPY) or bank transfer.

FAQ

• Q. Can we appeal if we never responded to the office action?
  A. Yes. An appeal can be requested against the decision of refusal even if no response was filed at the examination stage, as long as it is filed within 3 months of service.
• Q. Can we change the logo during the appeal?
  A. No. Changing the mark is a change of gist and is not allowed. A modified logo needs a new application.
• Q. We only need one class. Do we have to pay for all classes?
  A. No. By filing an amendment to reduce the classes on the same day as the appeal, the appeal fee is calculated on the reduced number of classes.
• Q. Can we switch to your firm for the appeal?
  A. Yes. We only need a power of attorney and the documents from the examination stage. We have handled more than 4,000 trademark applications, and every case is handled personally by the patent attorney.