Chapter 5: Examination Responses and Rejection Strategies

5.1 Grounds for Refusal

Japanese law distinguishes absolute grounds and relative grounds for refusal. Absolute grounds (Trademark Act Article 4) include marks lacking distinctiveness, descriptive marks, marks contrary to public order or morals, and marks identical or similar to national flags or official emblems. Relative grounds primarily involve prior conflicting marks (Article 4(1)(xi)) and similarity to a well-known mark (Article 4(1)(xv)).

5.2 Responding to a Notice of Rejection

When a Notice of Rejection is issued, the applicant may submit written arguments and/or amendments within the response period (extendable by up to two months upon request). Common strategies include: amending the designated goods/services to avoid similarity, submitting arguments that the marks or goods are dissimilar, and providing evidence of acquired distinctiveness through use.

5.3 Letters of Consent (Consent System)

A major reform took effect in 2024 under the Act Partially Amending the Trademark Act (Act No. 51 of June 14, 2023, effective April 1, 2024). Japan introduced a letters of consent system: where a conflict exists with a prior registered mark, the applicant may overcome the refusal by submitting a letter of consent from the prior rights holder. The JPO examines whether the consent is genuine and whether coexistence would actually cause confusion; consent is not automatically dispositive but substantially improves prospects.

5.4 Divisional Applications and Accelerated Options

Applicants may divide an application to separate refused goods from accepted ones, allowing accepted portions to proceed to registration. For urgent cases, accelerated examination remains available, and applicants may also request an interview with the examiner to clarify technical or commercial context.

If arguments fail and the rejection is affirmed, the dispute does not end there. Chapter 6 describes the post-registration and inter partes procedures that come into play before and after registration.

Chapter 6: Trademark Opposition and Invalidation Procedures

6.1 Post-Registration Opposition System

Japan operates a post-registration opposition system. After a trademark is registered and published in the Trademark Gazette, any person may file an opposition within 2 months from the date of publication of the gazette. The opposition is examined by a panel of three or five examiners. If the opposition is sustained, the registration is cancelled. Statistics show that relatively few oppositions succeed, but the procedure remains an important corrective mechanism.

6.2 Invalidation Trials

An invalidation trial (Article 46) can be requested by an interested party if a registration was granted in violation of absolute or relative grounds, including registration obtained by fraud. Unlike opposition, invalidation can be filed at any time while the registration remains in force, and the petitioner bears the burden of proof.

6.3 Non-Use Cancellation

A trademark registration may be cancelled for non-use (Article 50). If the mark has not been used in Japan for three consecutive years or more, any person may request a non-use cancellation trial. The registered owner bears the burden of proving use; failure to do so results in cancellation of the registration (or the relevant classes/goods). This makes genuine commercial use a critical obligation for trademark owners.

6.4 Procedure and Burden of Proof

Opposition and trial procedures are conducted in writing before the JPO, with the possibility of oral hearings in some cases. Decisions may be appealed to the Japan Patent Office's Chief Trial Examiner and thereafter to the Intellectual Property High Court.

The body that hears these trial-level disputes internally is the JPO's Trial and Appeal system, whose procedures and track record are examined in Chapter 7.