Your Notification of Provisional Refusal from Japan may not cite a conflicting mark at all. One of the most common objections against Madrid Protocol designations of Japan is that the goods/services wording is vague, indefinite, or too broad. This is also the most fixable ground on the list — usually by a short amendment — provided you respond by the deadline. Here is why a description that sailed through WIPO fails in Japan, and exactly how to repair it.
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The International Bureau checks that your list of goods and services is classified correctly under the Nice Classification — it does not judge whether each expression is precise enough for substantive examination. Each designated office applies its own clarity standard, and the JPO’s is stricter than many holders expect: every description must let the examiner determine its content and its scope of similarity. Broad catch-all wording drafted for your home registry often fails that test when the designation reaches Japan.
Article 6(1) requires an application to designate the goods or services for which the mark is used; Article 6(2) requires that designation to follow the classes prescribed by Cabinet Order. A description too indefinite to be understood, or one that does not sit within its class, fails these requirements — and Article 15(iii) makes that failure an independent ground for a Decision of Refusal, separate from any conflict with prior marks.
| Pattern | Example of the problem |
|---|---|
| Catch-all wording | “All goods in this class”, “goods not included in other classes” — no determinable scope |
| Unbounded generalities | “Machines and apparatus”, “services related to …”, “including but not limited to …” |
| Home-registry jargon | Expressions customary at your home office but with no established Japanese equivalent |
| Class mismatch | A term acceptable in itself but listed in a class the JPO considers wrong for it |
The Notification identifies which items are objected to. Everything else in your specification is not in dispute — which is exactly why responding is worthwhile.
This is the part most holders overlook. A Notification raising a vague-goods objection is typically laid out in two matching parts:
| Item | What it contains |
|---|---|
| Item V — The grounds for refusal | The legal ground (for a wording objection, Article 6(1)), followed by a bracketed list headed [vague/broad description] naming the exact terms the examiner objects to, class by class. |
| Item VI | A statement that the mark “will be protected if the goods and services are amended/limited as follows” — with the acceptable replacement wording underlined. |
The examiner has effectively pre-approved a wording
Item VI is not a hint — it is a worked example written by the person who will re-examine your case. Where the suggested wording still covers your commercial interest in Japan, adopting it verbatim is the fastest and lowest-risk route to a Statement of Grant of Protection. The Notification adds that these are examples, and that sometimes no underlined goods/services are shown — an item may even be marked “no proposal”, meaning the examiner found no acceptable rewording for it; in that case your attorney rebuilds the list from the JPO’s accepted-wording database, or the item is deleted.
One caveat printed on the form itself
Immediately below the examples, the Notification states: “Please note that this suggestion is applied to Ground 1 only. This application, however, still falls under (an)other ground(s) for refusal even if the above description is appropriately amended.” If your Notification lists a Ground 2 or Ground 3 — an intent-to-use doubt under Article 3(1), or a prior-mark citation under Article 4(1)(xi) — adopting the Item VI wording cures only the wording objection. The other grounds need their own answer in the same response.
So the first question is not “how do we argue this?” but “is the wording the examiner already offered good enough for our business?” If yes, the response is a short amendment adopting it. If it is too narrow — for example, it strips out a product line you actually sell in Japan — then you negotiate outward from that baseline, which is a far stronger starting position than drafting from scratch.
The standard cure is a written amendment (手続補正書) filed through a Japanese attorney, replacing the objected wording with definite expressions — starting from the underlined wording in Item VI, and otherwise drawn from the JPO’s own accepted-wording lists (the Examination Guidelines for Similar Goods and Services), which examiners accept without further debate. Three rules of thumb:
A vague-goods objection frequently arrives combined with a prior-mark citation under Article 4(1)(xi) — in that case the amendment and the similarity argument are filed together as one response.
The response deadline is the date stated on your Notification (typically three months for overseas holders), and it can be extended — in some cases even after it has passed. See the deadline and extension rules in our complete guide to responding to a Madrid refusal in Japan. If no response is filed, the objection matures into a Decision of Refusal on the application as a whole — do not assume the clean part of your specification will survive on its own (details: what happens to partially refused designations).
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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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