Some JPO refusals do not cite anyone else’s trademark.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.
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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.
| Trigger | Why it raises doubt |
|---|---|
| “General retail services” designated by an individual | Department-store-type retail (covering clothing, food and household goods together) is not a business an individual is normally found to run |
| “General retail services” designated by a company not found to run one | The examiner checks whether the applicant actually operates general retail; if research does not confirm it, the doubt is raised |
| Multiple dissimilar retail services | Retail services spanning unrelated fields (different similarity groups among 35K01–35K99) are rarely operated by one business |
| 23+ similarity-group codes in one class | As a rule, goods/services spanning 23 or more similarity-group codes within a single class are treated as too broad to be plausibly used, absent evidence |
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.
A chapeau refusal in a Madrid designation of Japan follows a fixed script, so it is worth knowing it in advance. The ground reads, in substance: the main paragraph of Article 3(1) requires that registrable trademarks either be currently in use or be put into use in the near future; there is reasonable doubt as to whether the applicant currently uses or will use the mark in the near future on the designated goods or services, because they come under too wide a scope within one class — followed by a bracketed line naming the affected classes, typically [All the designated goods or services in Class(es) …].
Then comes the useful part. The Notification states that the doubt will be resolved if the holder takes any one of three procedures:
| Procedure on the form | What you must file |
|---|---|
| (a) Prove existing business | Documents showing that you are conducting business connected with the designated goods/services in Japan — the form gives newspaper articles, catalogs and business documents as examples. |
| (b) Prove a plan | Documents showing that you plan to conduct such business in Japan within three to four years from the date of the international registration (or of the subsequent designation). The form requires both: (i) a written Declaration of Intention to Use stating when the mark will be used and for which goods or services, and (ii) documents of a business plan stating the current status of preparations. |
| (c) Limit the designation | Restrict the designated goods/services to an appropriate range — the form points to Item VI for examples of amendments/limitations. |
Two requirements printed in the small print
The form adds two “important notes” for routes (a) and (b): the supporting documents must be accompanied by a Japanese translation, and they must be submitted through a representative domiciled in Japan. A holder without Japanese counsel cannot complete either evidentiary route alone. The form also cites the URL of the JPO’s Examination Guidelines — the same guidelines summarized in this article.
Note the clock for route (b): it runs from the international registration date (or the subsequent designation date), not from the date of the Notification. Because a Notification typically issues a year or more after the IR date, a holder choosing route (b) is in practice promising use within roughly two to three years of the refusal.
If you already run the business, the refusal is answered with evidence. The examination handbook lists the materials examiners accept:
Not yet operating in Japan? Examination practice accepts a forward-looking answer: if you plan to conduct business with the designated goods or services in Japan within three to four years from the date of the international registration (or of the subsequent designation), you may file both a written Declaration of Intention to Use — stating when the mark will be used and for which goods or services — and documents of a business plan showing the current status of preparations. Where the plan looks thin, the examiner may ask for further substantiation — so a concrete business plan beats a bare declaration.
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.
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 often arrives as one ground among several — a single Notification can list Ground 1 (vague wording under Article 6(1)), Ground 2 (this chapeau doubt) and Ground 3 (a prior-mark citation under Article 4(1)(xi)) together. Each ground must be answered in the same response; curing one does not dispose of the others, and the form says so expressly. A chapeau refusal is routinely overcome — but never by silence: doing nothing lets it become final.
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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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