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.

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.

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