You designated Japan through the Madrid Protocol — and now a document titled “Notification of Provisional Refusal” has arrived from WIPO. First, the essentials: this is not a final refusal, most provisional refusals in Japan can be overcome, and your deadline — while strict — can be extended, in some cases even after it has passed. This complete guide to the response to a Madrid refusal in Japan explains what your document says, exactly how the deadline and extensions work under current JPO practice, your four response options, and the full procedural road to a Statement of Grant of Protection.
Table of Contents
The Notification looks dense, but only four pieces of information decide what you should do next. Find these on your document:
| Where to look | What it tells you |
|---|---|
| Total vs. partial refusal (first page) | Whether all of your goods/services are refused, or only some of them. |
| Grounds — the cited Articles | Article 4(1)(xi) = conflict with a prior similar mark (see our Article 4(1)(11) response strategies). Article 3(1) = lack of distinctiveness — or, under its main paragraph, a doubt about your intent to use. Objections to vague goods/services wording are also common for Madrid designations. |
| Cited prior marks | Registration numbers and owners of the marks blocking you — the raw material for a non-similarity argument or a Letter of Consent. |
| The response deadline | Stated on the Notification itself. This date governs everything — see the next section. |
The Notification states that a written opinion and/or amendment may be submitted “within three months from the date of pronouncement”. That phrase matters: the clock runs from the JPO’s date of pronouncement — not from the day WIPO forwarded the document, and not from the day it reached your desk. Transit time is inside your three months, not added to them.
Where to find your exact deadline
You do not have to calculate it. The first page of the Notification prints two dates at the bottom: “The date of pronouncement” and “Date on which the time limit to respond to the notification ends”. The second one is your deadline, already computed by the JPO. Check it before anything else — and note that a Notification often reaches the holder several weeks after the date of pronouncement.
Under the JPO’s current practice for trademark applications and Madrid designations of Japan (in force since January 2022), two extension routes exist:
| When you request | Extension granted | Official fee |
|---|---|---|
| Before the deadline expires | +1 month (single request, no reasons required) | JPY 2,100 |
| After the deadline has passed — within 2 months of expiry | +2 months (single request, no reasons required) | JPY 4,200 |
Two caveats: the after-expiry route is not available if a response was already filed within the original (or extended) period, and none of this extends the underlying stages that follow. But for holders who discover the Notification late — a common situation when no local representative was appointed — the after-expiry route means a missed deadline is often still recoverable.
There is a second, separate lifeline that many holders miss. The Notification itself states that even if the time limit has passed, an amendment of the list of goods and/or services may still be submitted “as long as the case is pending in examination, or retrial, in the JPO”. In other words: the window for arguing closes on the deadline, but the window for narrowing your specification stays open while the case is still alive at the JPO. Where the objection can be cured by deleting or limiting goods — as most vague-wording objections can — a late case is often not a lost case. Do not treat a missed date as the end of the matter without asking Japanese counsel. Source: JPO notice on extension practice (from January 1, 2022).
| Option | When it fits | Outcome if it works |
|---|---|---|
| 1. Argue (written argument / 意見書) | The cited mark is distinguishable, or the distinctiveness objection is contestable | Full scope preserved |
| 2. Restrict goods/services (amendment / 手続補正書) | The conflict or vagueness affects only part of the specification | Registration for the goods that matter |
| 3. Letter of Consent from the prior-mark owner | Article 4(1)(xi) citation where coexistence is realistic (available in Japan since the 2024 amendment) | Coexistence — full scope preserved |
| 4. Do nothing | Japan is no longer commercially relevant | The refusal becomes final for the Japan designation; the IR and other designations are unaffected — but see why silence is risky even for a partial refusal |
Options 1–3 are frequently combined. For typical costs of each route, see our Japan trademark Office Action cost estimate.
The JPO issues the Notification of Provisional Refusal — typically within 12-18 months of the IR designation date — and transmits it to WIPO. WIPO records and forwards it to the holder's representative of record (or the holder directly if no representative is appointed).
Key points:
If you have not appointed a Japanese representative, the most important document may never reach your counsel
The Notification spells this out: where the holder has not appointed a representative domiciled in Japan, the JPO sends certain documents — including a Decision to Refuse a Trademark Registration — directly to the holder, and those documents are not addressed to the representative recorded at WIPO. Your WIPO representative can therefore be entirely unaware that a final refusal has issued while the appeal clock is running. If mail from Japan may be sitting unopened at your registered address, treat that as urgent.
A Japanese trademark attorney must be engaged to file the response — overseas holders cannot file it themselves, since Japanese law requires parties without a domicile or business office in Japan to act through a representative domiciled in Japan. The deadline is the date stated on the Notification (typically three months for overseas holders), extendable by +1 month before expiry or +2 months within two months after expiry, as detailed above.
The response is a single submission — typically titled 意見書 (Argument), sometimes accompanied by a 手続補正書 (Amendment) for specification restriction. Evidence (advertising materials, sales data, market surveys) is attached if relied upon.
After the response is filed, the JPO examiner reviews the arguments and evidence. Re-examination typically takes 3-6 months, though complex cases may extend to 9 months.
Three possible outcomes:
| Outcome | Next Step |
|---|---|
| Refusal withdrawn | Statement of Grant of Protection issued via WIPO. Mark protected in Japan retroactive to IR date. |
| Renewed Office Action | Examiner raises new or modified concerns. Response deadline reset (typically 60 days). |
| Decision of Refusal (final) | Appeal to JPO Trial Board within 3 months. Otherwise refusal becomes final. |
For Madrid designations that overcome the Provisional Refusal, the JPO issues a Statement of Grant of Protection to WIPO. WIPO records protection of the international registration in Japan. The mark is then protected in Japan retroactive to the IR designation date — there is no gap in protection caused by the refusal exchange.
After grant, the IR is renewable through WIPO every 10 years. Renewal in Japan is automatic with the IR renewal (no separate Japanese renewal action required).
If the JPO issues a final Decision of Refusal, the holder may appeal to the JPO Trial Board within 3 months. The Trial Board conducts a de novo review and may reverse the examiner's decision. Trial Board proceedings typically take 6-12 months.
If the Trial Board upholds the refusal, further appeal lies to the IP High Court, with possible final appeal to the Supreme Court. We handle the full appeal chain when economically justified.
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