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JPO ARTICLE 4(1)(11) REFUSAL
Overcoming Similar-Mark Refusals in Japan
Strategies When Your Mark Conflicts with Prior Rights
Article 4(1)(11) refuses registration when your mark is identical or similar to a prior registered or pending trademark for identical or similar goods/services. This is the most common refusal ground for foreign trademark applications in Japan. This guide covers the JPO similarity test, Letter of Consent (2024 practice update), coexistence agreements, and appeal strategies.
Article 4(1)(11) — The Most Common Trademark Refusal
Approximately 40–50% of foreign trademark applications in Japan receive at least one Article 4(1)(11) refusal citation. The reasons vary: pre-existing Japanese registrations, prior Madrid Protocol filings, Madpro applications from earlier-filed jurisdictions, or even pending applications.
The 2024 practice update on Letter of Consent has dramatically improved foreign counsel's ability to overcome these refusals — JPO now more readily accepts consent letters from cited mark owners, opening new pathways to registration.
The JPO Similarity Test
JPO applies a multi-factor similarity test combining mark similarity and goods/services similarity. Both must overlap for refusal under Article 4(1)(11).
Mark Similarity Factors
| Factor | Consideration |
|---|---|
| Appearance (外観) | Visual impression of the mark — letter shapes, fonts, layouts, color schemes |
| Sound (称呼) | How the mark is pronounced in Japanese (including katakana transliterations of foreign words) |
| Meaning (観念) | Connotation, idea, or concept evoked by the mark |
JPO typically considers these three factors holistically. Sound similarity is often the deciding factor for foreign-language marks because Japanese consumers pronounce them in katakana, which can collapse pronunciation distinctions present in the original language.
Goods/Services Similarity
JPO uses a classification-based similarity system that goes beyond Nice Classification. Similar goods may include:
- Goods of similar nature/use/purpose
- Goods commonly sold through the same channels
- Goods with overlapping consumer bases
- Goods that one company commonly manufactures together
Hidden similar-goods relationships: JPO's similar-goods determinations can surprise foreign counsel. For example, "computer software" (Class 9) may be deemed similar to "computer programming services" (Class 42). Always consult JPO's "Examination Standards for Similar Goods/Services" or have us check before filing.
Response Strategies
Strategy 1: Letter of Consent (2024 Practice Update)
The 2024 practice update at JPO has been transformative. JPO now more readily accepts Letters of Consent from owners of cited marks, agreeing to coexistence.
How to obtain LoC:
1. Identify and contact the cited mark owner
2. Negotiate coexistence terms (industry differentiation, geographic restrictions, channel differentiation)
3. Execute a Letter of Consent agreement
4. Submit to JPO with the response
2024 LoC success rate: Since the practice update, our LoC success rate at JPO has been ~80%. The key is a well-drafted consent agreement explaining why confusion is unlikely (differentiated channels, customer bases, geographic markets, etc.)
Strategy 2: Coexistence Agreement
More comprehensive than LoC — a written agreement defining boundaries of each party's rights. Submitted to JPO as evidence of differentiated use.
Strategy 3: Argument on Mark Dissimilarity
Argue the marks are not actually similar. Effective when the cited mark differs significantly in appearance, sound, or meaning when evaluated by Japanese consumers.
Strategy 4: Goods/Services Differentiation
Narrow your application to non-overlapping goods. The cited mark may cover "software" while your products are specifically "video editing software for medical imaging" — the differentiation may be sufficient.
Strategy 5: Non-use Cancellation of Cited Mark
If the cited mark has not been used for the registered goods/services in Japan for the past 3 years, you can file a non-use cancellation action. After cancellation, your application can proceed. Learn more about non-use cancellation.
Strategy 6: Appeal to JPO Appeal Board
If the examiner maintains rejection, appeal can succeed especially if you can present a strong LoC, coexistence evidence, or dissimilarity arguments.
Letter of Consent — 2024 Practice Detailed
The 2024 practice change is the most significant trademark prosecution development at JPO in years. Foreign counsel should know:
What changed: JPO previously largely declined to accept Letters of Consent, requiring instead full negotiated coexistence agreements with extensive evidence. Since the 2024 update, JPO accepts well-drafted LoCs with appropriate context.
Elements of a successful LoC for JPO:
1. Clear identification of both parties and the marks in question
2. Express consent to coexistence in writing
3. Acknowledgment of risk of confusion analysis
4. Differentiation factors (channels, geography, consumer base, packaging, design)
5. Mutual undertakings to avoid actions likely to cause confusion
6. Term and termination provisions
7. Governing law (Japan or applicable jurisdiction)
8. Original signatures from authorized representatives
Fee Schedule
| Service | Fee (USD) |
|---|---|
| Initial refusal assessment | Free |
| Written response (basic dissimilarity argument) | $800–1,200 |
| Letter of Consent preparation + filing | $1,000–2,000 |
| Coexistence agreement drafting + negotiation | $2,500–5,000 |
| Goods narrowing strategy + response | $800–1,500 |
| Non-use cancellation action filing | $2,500–4,500 |
| Appeal to JPO Appeal Board | $2,500–4,500 |
| IP High Court appeal | $8,000–15,000 |
Timeline
| Stage | Time |
|---|---|
| Initial refusal → response deadline | 3 months (extendable +3 months) |
| LoC negotiation (typical) | 4–12 weeks |
| JPO re-examination after LoC submission | 2–6 months |
| Allowance after successful response | 1–3 months after re-examination |
| Non-use cancellation action | 6–12 months |
| Appeal to Appeal Board | 6–18 months |
How We Collaborate
Step 1: Send us the refusal notification and your priorities (urgency, willingness to negotiate, evidence available).
Step 2: We assess: (a) feasibility of LoC, (b) similarity argument strength, (c) goods differentiation options, (d) non-use cancellation if cited mark may be vulnerable.
Step 3: We provide a strategy memo + fee quote within 24 hours.
Step 4: Execute chosen strategy with regular status updates.