【MadridProtocol】When a Provisional Refusal against a Madrid Protocol application is issued in Japan

May 01, 2012

The Japan Patent Office conducts a substantive examination of a Madrid Protocol application designating Japan (through International Trademark Registration System) on either absolute ground or relative ground for refusal. Accordingly, a typical provisional refusal is that a trademark is indistinctive or conflicts with a prior filed/registered trademark.

If you would like to protect your trademark in Japan, you have to appoint a local agent to respond to the provisional refusal. Here are some tips for responding to a provisional refusal.

1. Reasons for refusal

(1) Absolute Ground

If the provisional refusal is on absolute ground, minor amendments (including deletion *1) of the indicated goods/services may overcome the refusal. If this is not the case, an argument or evidence of obtaining a secondary meaning has to be submitted if you would like to overcome the refusal.

*1 when the case is pending before the JPO, a request for the recording of a limitation of the list of goods and services (MM6) can be filed to WIPO.

(2) Relative ground

If the provisional refusal is on relative ground and the indicated goods/services need not be protected in Japan, the easiest way is to delete the goods/ services*2.

On the other hand, if the indicated items need be protected in Japan, there are some potential ways to overcome a provisional refusal:
 i  ) filing an argument,
 ii ) filing a trial for cancellation of the trademark registration not in use,
 iii) assignment of the right of the registered trademark from the right holder*2,
 iv ) others ( filing a trial for invalidation of the trademark registration due to non use, etc. )

*2 There is no letter of consent system in Japan.  Therefore, a letter of consent will be ignored and not able to overcome a Provisional Refusal on the ground that your trademark is similar to a prior registered trademark.

2. A part of the goods/services can spoil the whole application

Under Japanese Trademark Law, even only the indicated goods/services are deemed as indistinctive or conflict with a prior filed/registered trademark, the whole application will be finally refused.

Therefore, if the application fails to overcome the Provisional Refusal in the way of above i)-iv) , the application will be refused. 

It should be noted that division of an application is not allowed for a Madrid Protocol application designating Japan. Therefore, if you would like to keep both the indicated items and the rest of the items for protection, firstly, deletion of the indicated items from the current application is needed for the rest of the items to remain registrable. And secondly, filing a new Japanese trademark application designating the indicated items is needed for the indicated items to make a new start in the above potential ways*3. 

*3 We provide 50% discount of attorney's fee for filing a new Japanese trademark application in such cases. Please refer to our fee schedule.

3. Other information

Our previous posts provide information regarding the following matters:
- Madrid Protocol application designating Japan 
- Cancellation : Registered trademarks designating all the goods/services in one class in Japan
- Similarity Code:Identification of similar goods and services in trademark examination practice in Japan

End of report

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