Article 4(1)(11): Strategies to Argue Non-Similarity in Japan | EVORIX

Article 4(1)(11) of the Japan Trademark Act — refusal based on similarity to a prior registered mark for similar goods/services — is the single most common ground for relative refusal in Japan, including against Madrid designations. This article explains the JPO's similarity test and the strategies that succeed in overcoming Article 4(1)(11) refusals.

1. How the JPO Assesses Similarity

The JPO assesses similarity from the perspective of ordinary Japanese consumers in the relevant trade. The test is multi-factor:

Similarity in any one of appearance, sound, or concept may be sufficient to find similarity overall. Conversely, dissimilarity in all three is the strongest path to overcoming the citation.

2. Strategy 1: Visual (Appearance) Distinction

Effective when the marks have similar word elements but differ visually:

• Logo / device elements: Composite marks with distinctive logos can defeat citations against word-only registrations
• Stylization: Distinctive font, color, or layout
• Length differences: "ABC" vs "ABCDEFGH" — overall visual impression differs

Limitation: visual distinction alone often insufficient when the dominant element is a similar word.

3. Strategy 2: Phonetic (Sound) Distinction

The Japanese language has a smaller phoneme inventory than English, which sometimes creates similarities (e.g., "L" and "R" merge), but other times preserves distinctions invisible in writing:

• Different katakana representation: "MIRA" (ミラ) vs "MIRRA" (ミーラ) — vowel length distinguishes
• Stress and rhythm: Multi-syllable marks with different stress patterns
• Sound count: Marks with significantly different syllable counts

A katakana transliteration analysis from a Japanese phonetic specialist is often the deciding evidence.

4. Strategy 3: Conceptual Distinction

Often the most effective for marks that look or sound similar:

• Different dictionary meaning: Both marks have meaning in Japanese but evoke different concepts
• One has meaning, the other does not: A meaningful word vs an arbitrary string
• Both meaningless to Japanese consumers: Surprisingly, this can favor the applicant — without conceptual hook, consumers focus on visual/phonetic distinctions

5. Strategy 4: Goods/Services Restriction

If the mark cannot easily be argued dissimilar, restrict the specification to goods/services that:

• Have a different Cross-Class Similarity Code from the cited mark's coverage, or
• Address a clearly distinct trade channel (e.g., professional vs consumer, online vs retail)

JPO examiners often accept narrow restrictions that preserve commercially meaningful protection.

6. Strategy 5: Letter of Consent (2024 Amendment)

Since April 2024, the JPO accepts Letters of Consent under Article 4(4). This is a powerful tool when the prior right holder is reachable and cooperative.

Key requirements:

1. Written consent from the prior right holder
2. Demonstration that no source confusion will result — bare consent is insufficient
3. Factual basis for non-confusion: different trade channels, distinct logos, geographic separation, etc.

For details, see our Letter of Consent guide.

7. Strategy 6: Non-use Cancellation Against the Cited Mark

If the cited mark has not been used in Japan for 3 or more consecutive years, file a non-use cancellation action under Article 50. The procedure:

1. File the cancellation action with the JPO Trial Board
2. The cited mark's owner has 30 days to submit use evidence
3. If no genuine use is shown, the cited mark is cancelled
4. Once cancelled, the citation against your application is removed

Strategically, the Provisional Refusal response timeline is paused or coordinated with the cancellation action. We typically request a JPO timeline extension to align the two proceedings.

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