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FOR FOREIGN TRADEMARK COUNSEL
Japan Trademark Office Action
& Provisional Refusal Response
Specialized service for foreign counsel handling Madrid Protocol designations and direct Japan applications
Trusted by Foreign Counsel Worldwide
When the Japan Patent Office (JPO) issues a Provisional Refusal against your client's Madrid Protocol designation or a direct Japan application, the response window is short and the procedural rules are unforgiving. EVORIX Intellectual Property Office partners with foreign trademark counsel to deliver clear, evidence-based, deadline-compliant responses — with transparent fixed fees and English-language deliverables throughout.
Our practice is designed around the workflow of overseas firms: a single point of contact, written communication primarily in English, predictable pricing, and timely status updates. We have successfully responded to refusals from clients based in the United States, the European Union, China, Korea, the United Kingdom, Australia, and across Southeast Asia.
3-5 Day Initial Assessment
Strategy & quote upfront
Fixed-Fee Pricing
No surprise invoicing
Multi-Jurisdiction Reach
US, EU, CN, KR, AU clients
4 Offices in Japan
Osaka HQ, Tokyo, Nagoya, Fukuoka
Common Refusal Grounds & Our Approach
JPO Office Actions against trademark applications most commonly cite the following provisions of the Japan Trademark Act. Below is a practical overview of each ground and our typical response strategy.
Descriptiveness
The mark is composed solely of indications of the quality, raw material, function, intended use, or place of origin of the designated goods/services. The most frequently cited ground for English-language and foreign-language marks designating Japan via Madrid Protocol.
Our approach: Argue (1) the mark's overall impression is not purely descriptive when viewed by Japanese consumers, (2) the mark has acquired distinctiveness through use, or (3) restrict the specification to goods where descriptiveness does not apply. Evidence-based arguments — sales figures, marketing materials, web traffic from Japan — are critical.
Lack of Distinctiveness (Catch-All)
A residual ground covering marks that, while not falling under specific subsections (i)–(v), still lack distinctiveness from a Japanese consumer perspective. Often invoked for short slogans, simple geometric devices, or commonly used industry terms.
Our approach: Demonstrate that the mark functions as a source identifier in the relevant trade. Submit Japan-specific use evidence (Japanese website, JP-targeted advertising, sales records). For acquired distinctiveness arguments, the JPO requires substantial use evidence in Japan.
Prior Registered Mark Conflict
The mark is similar to a prior registered or applied-for trademark covering identical or similar goods/services. The most common relative ground for refusal in Japan, including Madrid designations.
Our approach: Three-pronged strategy: (1) argue dissimilarity in appearance, sound, or concept (Japanese consumer perception is key); (2) negotiate a Letter of Consent with the prior right holder under the 2024 amendment; (3) consider goods/services restriction or non-use cancellation action against the cited mark. We assess each option's feasibility upfront.
Confusion with Famous Mark
The mark is likely to cause confusion with another party's well-known or famous mark, even across non-similar goods/services. Often raised against marks resembling globally recognized brands or major Japanese brands.
Our approach: Challenge the JPO's assumption of fame in Japan; argue distinct concept/origin; demonstrate independent reputation of applicant's mark. This ground is among the harder to overcome and we provide a candid feasibility assessment before quoting.
Public Order & Morality
The mark is contrary to public order or morality, including marks that may offend Japanese cultural or religious sensibilities, or that constitute bad-faith filings against well-known foreign marks.
Our approach: Distinguish the mark's actual meaning and intended use from any negative connotation; provide evidence of legitimate adoption and good-faith use; explain the cultural context where applicable.
Other grounds we routinely handle: Article 3(1)(i) generic terms ・ Article 3(1)(v) simple/commonplace marks ・ Article 4(1)(8) personal names ・ Article 4(1)(10) well-known unregistered marks ・ Article 4(1)(16) misleading marks ・ Article 4(1)(19) bad-faith filings against foreign marks.
Letter of Consent — 2024 Amendment Practice
Effective April 1, 2024, the Japan Trademark Act was amended to introduce a Letter of Consent (LoC) system under Article 4(4). This change brought Japan in line with other major jurisdictions and opened a powerful new avenue for overcoming Article 4(1)(11) refusals.
Important nuance: Unlike a "true" consent regime, the JPO requires that the consent demonstrate no likelihood of source confusion. A bare consent is insufficient. The submission must explain why coexistence will not confuse Japanese consumers, supported by factual circumstances (e.g., different trade channels, distinct logo elements, geographic separation).
Our LoC services include:
- Initial assessment: probability of LoC acceptance for the specific cited mark and goods overlap
- Drafting a tailored LoC and accompanying argument addressing JPO non-confusion criteria
- Negotiation with the prior right holder (where the foreign counsel does not have direct contact)
- Coordination with overseas counsel where the prior right is held by a foreign entity
Transparent Fee Schedule
All fees in JPY, exclusive of consumption tax (10%). JPO official fees billed at cost. Currency conversion at quoted rate or actual rate at invoice.
| Service | Professional Fee |
|---|---|
| Initial Assessment Review of Provisional Refusal + cited marks + strategy proposal + fixed quote (3-5 business days) |
No charge |
| Office Action Response — Argument Only Single-ground refusal, no evidence required (e.g., simple non-similarity argument) |
JPY 80,000 – 120,000 |
| Office Action Response — Argument + Amendment Includes specification amendment or class restriction |
JPY 100,000 – 150,000 |
| Office Action Response — With Evidence Acquired distinctiveness arguments, well-known status, etc. Evidence collection billed separately if extensive |
JPY 150,000 – 250,000+ |
| Letter of Consent Drafting & Filing Including coordination with prior right holder if instructed |
JPY 80,000 – 150,000 |
| Multi-Ground Response Premium for each additional ground beyond the first (capped) |
+JPY 30,000 / ground |
| Hourly Rate (unpredictable matters) Used only when fixed-fee assessment is impractical; always discussed in advance |
JPY 30,000 / hr |
| JPO Extension Request Filing only — JPO official fee additional |
JPY 20,000 |
※ The above represents typical ranges. Actual fees are quoted on a case-by-case basis after reviewing the Provisional Refusal. Volume discounts available for foreign counsel with regular instruction flow. Trust-account / IOLTA arrangements considered upon request.
Timeline — From Provisional Refusal to Registration
Day 0 — Provisional Refusal Issued
JPO sends the Notice of Provisional Refusal to WIPO. WIPO forwards it to the holder/representative.
Within 3 Months — Response Deadline
Response must be filed via a Japanese trademark attorney. One-month extension available on request. Earliest possible engagement is strongly recommended.
3-6 Months — JPO Examination
After response filing, the JPO re-examines. Decision is typically issued in 3-6 months: registration, renewed Office Action, or final rejection (Decision of Refusal).
Registration / Statement of Grant
For Madrid designations, the JPO issues a Statement of Grant of Protection. WIPO records protection of the international registration in Japan. The mark enjoys protection retroactive to the IR date.
If the JPO issues a Decision of Refusal (final): An appeal to the JPO Trial Board must be filed within 3 months. We handle appeals at a separate fixed fee (typically JPY 200,000 – 350,000 + JPO official fees). Further appeal lies to the IP High Court.
How We Collaborate with Foreign Counsel
You forward instructions
Send the Provisional Refusal, application details, and your client's preferences. PDF / email is sufficient — no formal POA required at this stage.
We assess and quote
Within 3-5 business days, you receive an English assessment with success-probability commentary and a fixed quote. No charge for assessment.
Draft for your review
Upon instruction, we prepare the Japanese response and provide an English translation/summary for your review and your client's input.
We file with JPO
After your approval, we file with the JPO and confirm the filing receipt. Status updates provided when the JPO issues any communication.
Outcome reporting
When the JPO issues a decision (registration, further refusal, or appeal), we provide an English report with translated documents and recommended next steps.
Invoicing
Invoice in JPY at completion. Wire transfer accepted. Quarterly consolidated billing available for repeat foreign counsel.
Direct client contact: Only on your explicit instruction. We respect the foreign counsel relationship and never contact your client without authorization. All communication routed through your firm by default.
Frequently Asked Questions
Q What is a JPO Provisional Refusal?
Q What is your standard timeline for responding to a JPO Office Action?
Q Do you handle Letter of Consent practice in Japan?
Q What languages do you communicate in?
Q Can you provide a fixed-fee quote upfront?
Q How do you collaborate with foreign counsel?
Q What is the success rate for overcoming JPO Office Actions?
Q Do you accept urgent cases close to the deadline?
REQUEST AN ASSESSMENT
Send Us Your Provisional Refusal
Forward the JPO Provisional Refusal and we will respond within 3-5 business days with a strategy assessment and fixed quote — at no cost to you. Working language: English.
EVORIX Intellectual Property Office ・ Osaka HQ ・ +81-6-7777-1884 ・ Business hours: Mon-Fri 9:00-20:00 JST
Related Resources
Practical Guides for Foreign Counsel
In-depth articles covering JPO procedure, costs, and strategy.
Foundational Guides
- Responding to a JPO Provisional Refusal: A Practical Guide for Foreign CounselStep-by-step guide for foreign attorneys handling a JPO refusal.
- Working with a Japanese Trademark Attorney: What Foreign Counsel Should KnowBest practices for foreign counsel engaging Japanese benrishi.
- How Long Does It Take? Japan Trademark Prosecution TimelineRealistic timelines from refusal to registration in Japan.
Refusal Grounds & Strategies
- Top 5 Reasons for Trademark Refusals in Japan and How to Overcome ThemThe five most common JPO refusal grounds with response strategies.
- Article 4(1)(11): Strategies to Argue Non-Similarity in JapanEffective non-similarity arguments under Article 4(1)(11).
- Letter of Consent in Japan: Practice After the 2024 AmendmentHow LoC works in Japan after the 2024 Trademark Act amendment.
Madrid Protocol & Cost
- Madrid Protocol in Japan: What to Expect After the Provisional RefusalWhat happens after the JPO issues a provisional refusal under Madrid.
- Cost Estimate: Japan Trademark Office Action Response (2026 Update)Transparent fee guide for office action response in Japan.