Article 3(1) Main Paragraph Refusal in Japan: When the JPO Doubts Your Intent to Use — and How to Prove It

Some JPO refusals do not cite anyone else’s trademark. A refusal under the main paragraph of Article 3(1) — the chapeau — says something more basic: the examiner doubts that you actually use, or genuinely intend to use, the mark for everything you designated. For Madrid Protocol holders who carried a broad home specification into Japan, this is one of the most common surprises in the Notification of Provisional Refusal. The good news: the JPO’s own examination standards say exactly when this doubt is raised and exactly what evidence dissolves it.

1. What the Main Paragraph of Article 3(1) Requires

Article 3(1) opens: a trademark “used in connection with goods or services pertaining to the business of the applicant” may be registered. Japan does not require proof of use at filing — but where the designation is so broad that use across all of it is implausible, the examiner treats the chapeau itself as unsatisfied and issues a refusal. It is a doubt, not a verdict: the burden shifts to you to show the business, or the plan.

2. The Four Triggers Under JPO Examination Practice

Similarity-group codes are the JPO’s grouping of goods and services presumed similar to each other, published in the Examination Guidelines for Similar Goods and Services. Your Japanese attorney can count the codes in your specification precisely — which also tells you exactly how much to delete if you choose Route 3.

3. Route 1: Prove the Business Exists

If you already run the business, the refusal is answered with evidence. The examination handbook lists the materials examiners accept:

• Catalogs, flyers or printed material listing the goods you handle
• Photographs of the store and of the goods on sale
• Transaction documents — order slips, delivery notes, invoices, receipts
• Newspaper, magazine or internet coverage describing the business
• For general retail services: material showing sales of the retail business

4. Route 2: Prove the Plan — Intent-to-Use Documents

Not yet operating in Japan? Examination practice accepts a forward-looking answer: if you intend to begin use within roughly three to four years of filing (up to three years after registration), you may file a document stating your intent to use the mark plus materials showing the preparation status of the planned business. Where the plan looks thin, the examiner may ask for further substantiation — so a concrete business plan beats a bare declaration.

5. Route 3: Restrict the Specification

The pragmatic cure: file an amendment deleting or narrowing items until the trigger disappears — fewer than 23 similarity groups in the class, or retail services confined to one coherent field. This is often the fastest and cheapest route when the deleted items have no commercial value in Japan, and it can be combined with Routes 1–2 for the goods that matter. Costs for each route: see our Office Action cost estimate.

6. Madrid Designations: Why This Hits Foreign Holders

Broad specifications are cheap at many home offices, so international registrations often arrive in Japan carrying every class heading the holder could claim. That drafting style is precisely what the four triggers catch. If your Notification cites the Article 3(1) chapeau, start with the deadline — stated on the Notification and extendable, even after expiry in some cases: see the complete guide to responding to a Madrid refusal in Japan. A chapeau refusal is routinely overcome — but never by silence: doing nothing lets it become final.

Frequently Asked Questions