"Our brand name was refused in Japan because it 'lacks distinctiveness.' What does that mean?" "The same name is registered in our home country — why not in Japan?"
Together with similarity to an earlier mark, lack of distinctiveness under Article 3 of the Japanese Trademark Act is one of the most common reasons a trademark is refused in Japan. In this article, Japanese Patent Attorney Toru Kano of BrandAgent explains what kinds of marks are refused under Article 3, and how foreign applicants can respond or choose a safer name.
What you will learn
- Why Japan requires distinctiveness
- The six categories of Article 3(1), with examples
- The difference between Article 3 and Article 4(1)(xi)
- Acquired distinctiveness through use (Article 3(2))
- How to respond, and how to choose a name that avoids Article 3
What is Article 3? Why distinctiveness is required
A trademark exists to tell consumers "these goods come from this company." A mark that cannot do that — because it simply describes the product or is a word everyone uses — lacks distinctiveness and, as a rule, cannot be registered.
There is also a public-interest reason: common words and plain descriptions should stay free for every business to use. No single company should be able to monopolize them.
Note that the JPO judges distinctiveness from the viewpoint of Japanese consumers. An English word that seems like a brand to you may be understood as a plain description in Japan, where many English words are part of everyday Japanese.
The six categories of Article 3(1), with examples
| Item | What is refused | Examples |
|---|---|---|
| (i) | Common names of the goods/services | "Aluminium" or "Alumi" for aluminium |
| (ii) | Marks customarily used in the trade | "Masamune" for sake; "Genuine Parts" for auto parts; "Tourist Hotel" for lodging |
| (iii) | Indications of origin, place of sale, quality, contents, use, etc. | "Tokyo" for confectionery; "Specially Tailored" for shirts; "Short Stories" for books; "Ginza" for restaurants |
| (iv) | Common surnames or names | "Yamada", "Suzuki", "WATANABE"; "Sato Shoten" (Sato Store); "Tokyo Kogyo Co., Ltd." |
| (v) | Very simple and common marks | Numbers; one or two Roman letters (e.g. "A2", "AB"); a single kana; simple lines and basic shapes |
| (vi) | Other marks consumers would not see as a brand | Advertising slogans; units such as "gram" or "Net"; era names; common shop names (e.g. "Sakura", "Friend") |
In practice, item (iii) — descriptive marks — causes the most refusals. Small changes such as adding a long vowel or slightly altering the spelling of a descriptive word usually do not avoid this ground. Two letters joined by "&" (e.g. "A&B") are generally not treated as "very simple" under item (v).
Typical problems for foreign brands
- English names that describe the product: "PREMIUM BEAUTY" for cosmetics, "SMART LIGHT" for lamps, "ORGANIC TEA" for tea
- A place name plus a product name
- Short letter or number combinations used as model names
- Slogans and catchphrases
Article 3 vs. Article 4(1)(xi)
| The question | |
|---|---|
| Article 3 | Does the name itself work as a brand (distinctiveness)? |
| Article 4(1)(xi) | Assuming it is distinctive, does it conflict with an earlier registered mark? |
These are separate issues. A prior search will tell you whether there are conflicting earlier marks, but even a mark with no earlier conflicts can still be refused under Article 3 if it is descriptive.
Article 3(2): acquired distinctiveness through use
Even a mark falling under items (iii) to (v) can be registered if, through use, it has become recognized nationwide in Japan as indicating one company's goods or services. The JPO looks at factors such as:
- The form of the filed mark and whether it is the same as the mark actually used
- Period, area and volume of use in Japan
- Advertising and its reach
- Use of similar marks by third parties
- Trade circumstances and consumer survey results
Evidence includes photos of the goods, invoices and delivery slips, catalogs and advertisements, third-party press coverage, and survey reports. The filed mark must be identical to the mark used; a different script or typeface can break that identity. The bar is high — use and fame in your home country alone are not enough, and newly launched brands rarely succeed under Article 3(2).
How to respond to an Article 3 refusal
If you have no domicile or business office in Japan, the response must be filed through a Japanese patent attorney. This also applies to provisional refusals of Madrid designations.
- ① Written opinion: argue that the mark as a whole is not a mere description and would not be understood that way by Japanese consumers.
- ② Acquired distinctiveness (Article 3(2)): submit evidence of extensive use in Japan. Strong evidence is required.
- ③ Change the mark: file again with a more distinctive name or with a logo. At an early stage, before major investment in the brand, this is often the most practical choice.
BrandAgent's fee for an Office Action response: JPY 25,000 (excluding Japanese consumption tax, where applicable).
How to choose a name that avoids Article 3
Naming tips
- Avoid names that simply describe what the product is or does.
- Avoid common words and phrases, and slogans.
- Coined words, or words unrelated to the product, are much safer.
- Ask yourself: "Does this work as a brand, or as a description?"
Before filing, we check both distinctiveness and earlier marks. If you instruct us to file, the prior trademark search is free. With more than 4,000 applications filed, every case is handled personally by a licensed patent attorney.
FAQ
- Q. Our mark is registered in our home country. Why was it refused in Japan?
A. Distinctiveness is judged separately in each country, and in Japan from the viewpoint of Japanese consumers. Many English words are everyday Japanese, so a name may be seen as descriptive in Japan. - Q. Which marks are most often refused under Article 3?
A. Names that directly describe the product's content, quality or origin; common names; one or two letters or numbers; a place name plus a product name; and slogans. - Q. Can a descriptive name ever be registered?
A. Yes, under Article 3(2), if it has become widely recognized in Japan through use. The bar is high and substantial evidence is required. - Q. Does adding a logo help?
A. It can. A distinctive logo or design combined with the word may be registrable, although the descriptive word itself will not be protected on its own.
Summary
Key points
- Article 3 refuses marks that lack distinctiveness, such as descriptive words, common names and slogans.
- Descriptive marks (item (iii)) cause the most refusals.
- Article 3(2) allows registration after nationwide recognition in Japan, but the bar is high.
- Choosing a coined, distinctive name before filing is the safest approach.
Related articles
- Japanese Trademark Office Action (Notice of Reasons for Refusal): Common Grounds and How to Respond
- Standard Character Marks in Japan: Word Mark vs. Logo Mark and How to Choose
- Registering a Logo Trademark in Japan: Word, Symbol or Combined Mark?
- Refused for a Similar Trademark in Japan? Article 4(1)(xi) Explained by a Japanese Patent Attorney
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