Responding to a JPO Provisional Refusal: A Practical Guide for Foreign Counsel | EVORIX

When the Japan Patent Office (JPO) issues a Provisional Refusal against a Madrid Protocol designation, the procedural rules are strict and the response window is short. This guide explains, from the perspective of a Japanese trademark attorney working regularly with foreign counsel, what to expect and how to craft an effective response.

1. What is a Provisional Refusal under Madrid Protocol Designation?

When an international registration (IR) designates Japan, the JPO conducts a substantive examination. If grounds for refusal are found, the JPO issues a Notification of Provisional Refusal via WIPO. The refusal lists the specific articles of the Japan Trademark Act being relied upon (most commonly Article 3 distinctiveness or Article 4(1)(11) prior mark conflict).

A Provisional Refusal does not mean the application is dead. It is the start of a formal exchange in which the holder may rebut the cited grounds. Critically, the holder must engage a Japanese trademark attorney to file the response — there is no direct-filing option for foreign holders.

2. Deadlines and Procedural Requirements

The response, called an Argument (意見書), is filed in Japanese with the JPO. It typically includes legal arguments, evidence (where applicable), and may be accompanied by a specification amendment. All correspondence with the JPO is in Japanese; we provide English translations and English-language deliverables for foreign counsel.

3. Response Strategy by Refusal Ground

Different grounds call for different strategies. The most frequent grounds and their typical responses:

For a comprehensive overview of each ground, see Top 5 Reasons for Trademark Refusals in Japan.

4. What to Forward to Your Japanese Attorney

An efficient initial review requires the following:

• The full Notification of Provisional Refusal (PDF from WIPO)
• The international registration number and the Japan-designation deadline
• Any cited mark details (registration numbers, owner names) — typically attached to the Notification
• The applicant's commercial use plans in Japan (if any) — this informs evidence strategy
• Any existing relationship with the prior right holder (if applicable to Letter of Consent path)
• The applicant's position on goods/services restriction — full restriction may be a legitimate path

No formal Power of Attorney is required at the initial-review stage. We typically request POA only when filing the response. Standard POA forms in English are accepted.

5. Engagement and Pricing

EVORIX provides a free 3–5 business day initial assessment with a fixed-fee quote upon receipt of the Provisional Refusal. Typical fee ranges (JPY, exclusive of consumption tax):

• Argument only (single ground, no evidence): JPY 80,000 – 120,000
• Argument + Amendment: JPY 100,000 – 150,000
• Argument with Evidence (acquired distinctiveness etc.): JPY 150,000 – 250,000+
• Letter of Consent drafting & filing: JPY 80,000 – 150,000

For details, see our Japan Trademark Refusal Response service page with full fee schedule.

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