APEX Patent Solutions is a Japan-based international patent & trademark firm that helps overseas businesses navigate Japan trademark prosecution—including how to respond to a JPO Notice of Reasons for Refusal (office action).
This guide explains, in plain English, what the notice means and the practical options to keep a Japan application on track.
What is a JPO “Notice of Reasons for Refusal” ?
A JPO Notice of Reasons for Refusal is an examiner’s explanation that the mark cannot proceed. The notice cites the relevant articles of the Japanese Trademark Act, explains the facts behind the refusal, and sets a response deadline. It also lists the examiner’s contact details.
It is not a final rejection. If the applicant responds in time—by filing arguments (a written opinion) and/or amendments (a procedural amendment)—the examiner may withdraw the refusal and the application can move forward to registration. On the other hand, if no response is filed, the JPO will issue a Decision of Refusal.
Timing: For applicants without a Japanese address (i.e., “foreign applicants”), the response period is typically 3 months from the mailing date. Extensions are often available (with government fees).
A Japanese representative (Benrishi) is required to file the response on your behalf.
Step 1 — Read the notice carefully
The notice will specify:
- The legal grounds (e.g., Article 3, Article 4.1(11), Article 6) and the examiner’s reasoning.
- The response window and how to count it.
- The examiner’s phone number (an interview/phone call can be helpful to confirm acceptable amendments, especially for goods/services wording).
Step 2 — Choose a Response Strategy (6 Practical Options)
Once you understand the JPO’s reasoning, the next step is to decide how to respond within the deadline.
In most cases, one or more of the following six strategies can be used — sometimes in combination — to overcome the refusal and move the application forward.
1) File Arguments (Written Opinion)
If you believe the examiner’s reasoning is incorrect, you can submit a written argument explaining why the mark should be registrable.
Typical arguments include:
- The mark is distinctive (not descriptive or generic).
- The mark is not confusingly similar to earlier trademarks in appearance, pronunciation, or meaning.
- The mark’s use does not mislead consumers about quality or origin.
The goal is to persuade the examiner logically and factually, often by referencing JPO Examination Guidelines or past precedents.
2) Amend Goods/Services (Procedural Amendment)
If part of your goods or services overlaps with another trademark or causes confusion, you can narrow the specification by deleting or clarifying problematic terms.
This often resolves refusals efficiently. However:
- You cannot change the trademark itself.
- You cannot add new goods/services not included in the original filing.
Amendments are particularly useful for refusals under Article 4.1(11) (conflicts) and Article 4.1(16) (misleading marks).
3) Combination: Argument + Amendment
This is the most common and effective approach.
You can delete or clarify certain items (through amendment) while simultaneously submitting arguments for the remaining goods/services.
This hybrid method keeps valuable coverage while addressing the examiner’s concerns efficiently.
4) File a Divisional Application
If some classes or goods/services are acceptable but others face objections, you may divide the application.
The non-problematic portion can proceed to registration, while the remaining portion continues examination or argument.
Although this increases official and attorney costs, it allows faster registration for part of the application and maintains flexibility for ongoing prosecution.
5) File a New Application
If the refusal is based on a fundamental issue — such as lack of distinctiveness or a strong prior mark conflict — it may be faster and more cost-effective to re-file with a modified trademark or a more precise list of goods/services.
6) Take No Action (Abandonment)
If the mark is no longer necessary, or if the refusal indicates that continued use is legally low-risk (e.g., descriptive terms), you can allow the application to lapse.
This avoids additional cost, but you lose the right to exclusive use and, in conflict cases, may still risk infringement if similar marks are registered by others.
Recommended responses by common refusal ground
(1) Conflict with earlier marks — Japanese Trademark Act Article 4.1(11)
When a prior identical/similar mark exists for identical/similar goods/services, consider:
- Amending the specification to remove the overlap (often very effective).
- Arguing non-similarity (appearance/sound/concept, trade channels, consumer attention).
- Consent (see below) and no-confusion showing, where suitable.
If protection for key items would remain blocked, a new application with an adjusted mark may be more strategic. Also be mindful: a citation signals a potential infringement risk if that prior right is active.
(2) Lack of distinctiveness — Japanese Trademark Act Article 3
If the mark is descriptive (“SWEET” for confectionery) or very simple/ordinary, arguments must show inherent distinctiveness or acquired distinctiveness (evidence of use, advertising, media, sales). If that’s unrealistic, consider re-filing with a more distinctive element (e.g., adding a coined house mark) and/or pursuing a logo/device version that carries source-indicating power.
(3) Quality/deception concerns — Japanese Trademark Act Article 4.1(16)
If the wording could mislead consumers about quality, nature, or origin, typically limit the goods/services (e.g., “rice balls of Tokyo origin” instead of broadly “rice balls”) so the description matches real-world use and avoids misunderstanding.
(4) Over-broad/unclear specification — Japanese Trademark Act Article 6 (and sometimes Article 3.1 chapeau “use doubts”)
Fix by clarifying classes, replacing vague items with JPO-acceptable terms, and trimming over-reaching coverage. Supporting documents (plans, intent-to-use statements) can overcome “use-doubt” concerns under the Article 3.1 chapeau.
Consent, Division, Interviews, and Other Tools
- Consent & no-confusion showing (new framework in Japan):
If the senior owner consents and the parties can show no likelihood of confusion, consent may support co-existence in suitable cases. This does not guarantee allowance; the JPO still checks for confusion risk. - Division (split the application):
If only some items/classes are problematic, divide the case so the clean portion proceeds to registration while discussions continue on the remainder. (Extra official/agent fees apply.) - Examiner interview (telephone/meeting):
Helpful to confirm acceptable wording for goods/services and to ensure the amendment squarely addresses the objection. - Parallel actions:
Depending on the situation, consider assignment negotiations, a non-use cancellation against a blocking registration, or (in Madrid cases) coordinating any WIPO/Madrid steps with the JPO response.
Timelines, extensions, and representation
Deadline:
Foreign applicants generally have 3 months to respond; extensions (often up to +3 months) are available with fees. Start early—collecting evidence and coordinating translations takes time.
Representation:
Applicants without a Japanese address must respond through a Japanese trademark attorney (Benrishi). If Japan was designated via Madrid and the JPO issued a Provisional Refusal, appointing a Japanese representative is mandatory to submit the response.
Practical do’s and don’ts (Japan trademark office actions)
- Do use clear, JPO-friendly item wording;
- Do narrow precisely to remove the conflict or deception concern;
- Don’t try to change the mark by amendment (not allowed);
- Don’t broaden the scope or add new items not in the original filing.
Need help responding to a JPO refusal?
APEX Patent Solutions handles JPO office action responses—arguments, amendments, consent strategies, division filings, and appeals to the JPO Appeal Board—for foreign applicants and Madrid holders. A licensed patent attorney (Benrishi) will assess the refusal, propose the most cost-effective route, and manage drafting, evidence, and deadlines.
Want a quick assessment and a cost estimate? Get in touch and share the Notice of Reasons for Refusal—we’ll outline the risks, options, timeline, and fees to help the application move forward toward registration.