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Partial Refusal in Japan: Will the Non-Refused Goods Survive If You Do Nothing? — Madrid Protocol Designations

Picture of Takefumi Sugiura – Japanese Patent Attorney
Partial Refusal in Japan: Will the Non-Refused Goods Survive If You Do Nothing? — Madrid Protocol Designations

Many Notifications of Provisional Refusal from Japan carry a detail that looks reassuring: the refusal concerns only part of your goods and services. A natural conclusion follows — “the rest must be safe, so I can ignore this.” In Japan, that conclusion is dangerous. This article explains what a partial refusal actually means in a Madrid Protocol designation of Japan, why silence puts even the clean goods at risk, and the one-page response that removes the risk entirely.

1. What “Partial” Means on Your Notification

The JPO examiner reviewed your whole specification and found grounds — a prior similar mark under Article 4(1)(xi), vague goods wording, or an intent-to-use doubt — against the items listed in the Notification, and none against the rest. So far, so good: the dispute is genuinely confined to the listed items.

2. Why Doing Nothing Is Dangerous in Japan

The trap is in what happens next. Article 15 of the Japan Trademark Act directs the examiner, where a ground exists, to issue a Decision of Refusal on the trademark application — the decision is framed on the application as such, not item by item. Japanese examination practice has no mechanism that automatically severs the unobjected goods and walks them through to registration while the objected ones quietly lapse. Waiting in silence therefore gambles the goods you care about on procedural mercy the statute does not promise.

The rule of thumb for Japan: a partial refusal is an invitation to respond, not permission to ignore. The response that secures the clean goods can be a single deletion amendment — minutes of drafting, not a legal battle.

3. The Cheap Fix: a Deletion Amendment

If the refused items do not matter commercially in Japan, instruct a Japanese attorney to file a short amendment (手続補正書) deleting exactly those items. The ground of refusal disappears with them; examination proceeds for the remaining goods toward a Statement of Grant of Protection. No argument, no evidence, no negotiation — this is the floor-cost way to convert a partial refusal into a partial win.

4. When Fighting Beats Deleting

Deletion is the floor, not the ceiling. A cited prior mark can be argued around (non-similarity), neutralized with a Letter of Consent under the 2024 amendment, or sometimes cleared away entirely — a registration unused for three years is vulnerable to a non-use cancellation. Vague-wording objections cost little to cure by rewording. Weigh the commercial value of the refused goods against the cost of each route — our cost estimate and the options matrix in the complete response guide are built for exactly that decision.

5. Deadline — Including the After-Expiry Rescue

Everything above must happen by the deadline stated on your Notification (typically three months for overseas holders). Two extension routes exist under current JPO practice — +1 month requested before expiry, or +2 months requested within two months after expiry (official fee JPY 4,200, available only if nothing was filed in time). Full rules, with the JPO source: Response to Madrid Refusal in Japan: Complete Guide.

Frequently Asked Questions

My Notification says the refusal concerns only part of my goods. What does that mean?
The examiner found grounds — a conflicting prior mark, vague wording, or an intent-to-use doubt — against some items in your specification and no grounds against the rest. The listed items are the entire battlefield; the rest is not in dispute.
If I do nothing, will the non-refused goods proceed to registration automatically?
That is not a safe assumption in Japan. Article 15 of the Trademark Act frames the examiner’s Decision of Refusal as a decision on the trademark application as such, and Japanese practice has no mechanism that automatically severs the clean goods and registers them while the objected goods lapse. The reliable way to secure the clean part is to respond — deleting the objected items is usually enough.
What is the cheapest way to save the non-refused goods?
A short amendment (手続補正書) deleting the refused items, filed through a Japanese attorney before the deadline. No argument, no evidence — the refusal ground disappears with the deleted goods, and prosecution proceeds for what remains.
Is it worth fighting for the refused goods instead of deleting them?
Often yes — prior-mark citations can be argued or resolved with a Letter of Consent, and vague-wording objections can be cured by rewording. Deleting is the floor, not the ceiling. Compare the options in our complete response guide before deciding.
I only discovered the Notification after the deadline. Is everything lost?
Not necessarily. Under JPO practice since January 2022, an extension of two months can be requested within two months after the response period expired (official fee JPY 4,200), provided no response was filed in time. Move immediately — send the Notification PDF to Japanese counsel the day you find it.

FOR HOLDERS & FOREIGN COUNSEL

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Disclaimer

This article provides general information about Japanese trademark practice as of September 2026 and does not constitute legal advice. Examination practice and official fees may change; the deadline and options for a specific case depend on the documents actually issued. Please consult a qualified Japanese attorney about your specific matter.

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