"The JPO says our mark conflicts with an earlier registration — but only for two of the twelve products we listed. Do we have to wait until that is resolved before anything is registered?"
This is a very common situation for overseas applicants. In Japan, a notice of reasons for refusal often targets only part of the goods or services, but as long as the objection remains, the whole application cannot be registered. For an online seller who needs a registration number for a marketplace, or a brand that wants to take action against copycats, every month counts.
In this article, Japanese Patent Attorney Toru Kano of BrandAgent explains the two tools Japan offers when only some goods are refused — deleting goods by amendment and filing a divisional application — and when each one makes sense.
What you will learn
- Why a partial refusal blocks the whole Japanese application
- Deleting goods vs dividing the application
- The legal requirements and timing limits for division
- Official fees
- How this helps sellers who need a registration quickly
Why a partial refusal holds up everything
In Japan, one application can cover several goods and services in one or more classes. Examination, however, ends in one decision for the whole application. If the examiner finds that the mark conflicts with an earlier mark for "bags" but has no problem with "clothing" and "shoes", the application cannot be registered for clothing and shoes until the objection to bags is overcome — or bags are removed from the application.
You respond to a notice of reasons for refusal within the period stated in the notice. According to the JPO's formality examination manual, this is generally 3 months for applicants outside Japan and 40 days for applicants in Japan. One request within the period extends it by 1 month (official fee JPY 2,100); a request after the period has expired can extend it by 2 months (JPY 4,200), unless you have already filed a response within the period.
Option 1: delete the refused goods by amendment
The simplest response is to file an amendment (tetsuzuki hosei-sho) deleting the goods that the examiner objected to. If the reasons for refusal concern only those goods, deleting them removes the objection and the application can proceed to a decision of registration for the remaining goods.
- Pros: fastest and cheapest; the JPO fee table lists no official fee for a trademark amendment.
- Cons: the deleted goods are gone for good. An amendment cannot add goods back or broaden the list. If you need protection for those goods later, you must file a new application with a new (later) filing date.
Deletion is the right choice when the refused goods are not important to your business in Japan — for example, items you added "just in case" but do not actually sell.
Option 2: divide the application
If the refused goods do matter, you can split them off into a new application (a divisional application) and keep fighting for them, while the original (parent) application proceeds to registration for the unproblematic goods.
Under Trademark Act Article 10 and the JPO's explanation of the requirements, a division is valid when:
- the parent application is pending in examination, an appeal/trial or a retrial (or a court action against an appeal decision of refusal is pending);
- the parent application's filing fee has been paid (a requirement added with effect from 9 June 2018);
- the divisional application is for the same mark;
- its goods/services are part of those in the parent immediately before the division; and
- those goods/services are deleted from the parent by an amendment filed at the same time as the divisional application.
If these requirements are met, the divisional application is deemed filed on the parent's filing date, so you keep your priority position against later applicants. If they are not met — for example, the deleting amendment is not filed at the same time — the JPO notifies you that the filing date cannot be backdated.
The JPO guidelines also note that you may divide even within one broad term: goods that fall under one general description in the similar goods/services examination standards can be split item by item.
What happens next
The parent, now free of the refused goods, can proceed to a decision of registration. The divisional application is examined separately; you can argue against the refusal, wait for the earlier mark to lapse, seek a non-use cancellation of the earlier mark if it is not being used, or negotiate with its owner. The registration you need now is not held hostage by that process.
Timing: divide before the examiner decides
Division requires the application to be pending. Once the examiner has issued a decision — registration or refusal — the application is no longer pending in examination. In practice:
- Best timing: file the divisional application together with your response to the notice of reasons for refusal.
- After a decision of registration: it is generally too late to divide the application. Note that you must pay the registration fee within 30 days after the decision of registration, and the right arises only on registration.
- After a final refusal: the case must become pending again, for example by filing an appeal against the decision of refusal, before division is possible.
After registration, a different procedure exists: the registered trademark right itself can be divided by goods or services (official fee JPY 30,000 per the JPO fee table). This is useful mainly for selling or licensing part of a registration, not for overcoming a refusal.
Official fees
| Procedure | Official JPO fee |
|---|---|
| Amendment deleting goods | None listed for trademarks |
| Divisional application | Filing fee for a new application: JPY 3,400 + JPY 8,600 per class |
| Registration (10 years) | JPY 32,900 per class, for each application that is registered |
| Extension of response period | JPY 2,100 (within period) / JPY 4,200 (after expiry) |
| Division of a registered right | JPY 30,000 |
Because the parent and the divisional application are registered separately, a class that appears in both will incur the registration fee twice. When the refused goods are in the same class as the goods you keep, factor this into the decision.
Example: a cross-border seller
A fictional overseas brand files one class covering bags, wallets and umbrellas. The examiner cites an earlier mark for wallets only. The seller mainly sells bags and needs a registration quickly.
- If wallets are not important: delete "wallets" by amendment. The application can proceed to registration for bags and umbrellas.
- If wallets are a planned product line: file a divisional application for wallets (keeping the original filing date) and delete them from the parent at the same time. The parent proceeds to registration; the dispute over wallets continues in the divisional application.
*Fictional example. Whether the objection is limited to certain goods depends on the notice.
Marketplaces and Brand Registry
Amazon.co.jp's Brand Registry page states that a pending trademark may be accepted in some cases, and that you need the application or registration number issued by the trademark office. Even so, a registration gives you an enforceable right in Japan, while an application does not. Getting the core goods registered quickly — by deleting or dividing out the problem goods — is often the practical goal. Marketplace rules change, so check the latest guidelines.
Madrid designations cannot be divided in Japan
According to the JPO guidelines, division under Trademark Act Article 10 does not apply to international trademark applications (Madrid designations of Japan). If your Japan designation is provisionally refused for some goods, you can restrict the goods, but not split them into a separate Japanese application. You also need a representative in Japan to respond. If flexibility in Japan matters, consider a national Japanese application.
How to avoid partial refusals in the first place
- Search before filing. A prior search shows which goods are at risk, so you can leave them out or file them separately from the start.
- List what you actually sell. Long "just in case" lists increase the chance of a conflict.
- Consider separate applications for core goods and riskier goods when speed matters.
- Consider accelerated examination when the requirements are met: it can shorten examination from around 9–12 months to around 2–3 months.
Cost guide
Official JPO fees: filing JPY 3,400 + JPY 8,600 per class; registration (10 years) JPY 32,900 per class. BrandAgent's fees for a new application: JPY 25,000 per class at filing and JPY 25,000 per class at registration (excluding Japanese consumption tax). The prior search is free when you instruct us to file, and consultations and quotes are free. For responses to refusals and divisional applications, ask us for a free quote. We communicate in English and Chinese and accept payment by PayPal (in JPY) or bank transfer.
FAQ
- Q. Can we add goods back after deleting them?
A. No. An amendment cannot add goods or broaden the list. You would need a new application with a later filing date. - Q. Does the divisional application keep our original filing date and priority?
A. Yes, if the legal requirements are met, it is deemed filed on the parent's filing date. The JPO notifies you if the date cannot be backdated. - Q. Can we divide after we received the decision of registration?
A. Generally no — the application is no longer pending in examination. Decide on division when you respond to the notice of reasons for refusal. - Q. Our application was filed through another firm. Can you take over the response?
A. Yes. We can review the notice and recommend deletion, division or argument. Every case is handled personally by the licensed patent attorney; BrandAgent has handled more than 4,000 trademark applications.
Key points
- A refusal for some goods blocks registration of the whole application.
- Delete unimportant goods by amendment — quick, no official fee, but irreversible.
- Divide out important goods: the divisional keeps the original filing date while the parent proceeds to registration.
- Divide while the application is pending — ideally together with your response.
- Madrid designations of Japan cannot be divided; national filings are more flexible.
Received a partial refusal for your Japanese trademark?
Send us the notice — we will tell you whether to delete, divide or argue, and give you a fixed quote, free of charge.
BrandAgent Patent Office (Kyoto, Japan)
Toru Kano, Japanese Patent Attorney
More than 4,000 trademark applications handled