Don’t give up! Let’s know the “reasons for refusal” of trademark application in Japan

I filed a trademark application and received a “Notice of Reason for Refusal” from the Japan Patent Office.
I was shocked to get a “rejection” for a logo that I put a lot of thought into. Is it the end of the road for me? ……?

Calm down. A “rejection” is kind of a technical term, and the patent office doesn’t mean any harm.
It does not mean that your trademark application has been rejected. If you know what “reasons for refusal” mean, you won’t be afraid.

This article explains the reasons for the refusal of trademark registration.

For specific measures to take when you receive a “Notice of Reason for Refusal,” please refer to this article.

What are the reasons for the refusal of trademark registration?

Reasons for refusal of trademark registration are reasons why a trademark cannot be registered.

Why is there a reason for refusal?

Once a trademark is registered, the trademark right is effective throughout Japan.
If the following words or marks are monopolized by someone else, you are in trouble.

• Words that would be troublesome if everyone could not use them (e.g., generic name of a product, place of origin, etc.)
• Words or marks that discredit the nation (e.g., national flag)
• Words or marks that conflict with the rights of others.

However, if the state judges each of these without any criteria, it is difficult for trademark applicants to know what to apply for, isn’t it?
Therefore, the Trademark Law provides a list of reasons why a trademark application may be refused.
(The details are stipulated in the Examination Guidelines and the Examination Handbook.)
These are the reasons for refusal.

What is the Examination of a Trademark Application?

The examiner of the Japan Patent Office (JPO), which is a national agency, determines whether a trademark application has reasons for refusal by examining the application.

The examination requires a great deal of effort on the part of the examiners at the JPO.
Trademark applications that are not formal, such as incomplete application forms, failure to pay fees, etc., may be rejected before the examination.

What is a Notice of Reason for Refusal?

When reasons for refusal are found during the examination, the examiner will send a written notice of reasons for refusal to the applicant.
If there are multiple reasons for refusal, they are combined into one notice.
Notice of reasons for refusal

Although a response may be made to a Notice of Reason for Refusal, it is not possible to respond to a Notice of Reason for Refusal.
If a new reason for refusal arises as a result of a response, or if the examiner finds a new reason for refusal, a second or third notice of reasons for refusal may be sent.

What happens if I leave a Notice of Reason for Refusal unattended?

If you leave a notice of reasons for refusal unanswered and do not respond to it within the specified period, there is a high probability that an examiner will issue a Decision of Refusal.

What are the reasons for refusal?

If the trademark itself is not suitable for registration

This mainly applies to trademarks such as those listed in Article 3 of the Trademark Law.
It is something that would cause trouble for others in the same industry if someone were to monopolize it.

• Trademarks consisting solely of the common name of the goods or services (Article 3(1)(i) of the Trademark Law)
• Trademarks consisting solely of words indicating the quality of the goods or services (Article 3(1)(iii) of the Trademark Law)

In the rare event that an application is filed for the same trademark and the same designated goods or services as a previous application, it is considered “contrary to the purpose of the Trademark Law system” (so-called “conceptual rejection”).

I’ve expanded the scope of my business and want to reapply for a trademark, is that ok?

It is okay to reapply for a patent with a broader scope of designated goods, as it does not constitute a conceptual objection.
Re-filing an application with the same or narrower scope of designated goods or services may result in a Notice of Reason for Refusal. (Trademark Examination Guidelines 41.01)

When it concerns the rights or dignity of others.

These are mainly the trademarks listed in Article 4 of the Trademark Law.

Typical examples would be the trademarks listed in Article 4(1)(xi) of the Trademark Law.

is identical with, or similar to, another person’s registered trademark which has been filed prior to the filing date of an application for registration of that trademark, if such a trademark is used in connection with the designated goods or designated services relating to that registered trademark (referring to goods or services designated in accordance with Article 6, paragraph (1) (including cases where it is applied mutatis mutandis pursuant to Article 68, paragraph (1)); the same applies hereinafter), or goods or services similar thereto;

Trademark Act (Translation by Japanese Law Translation Database System: https://www.japaneselawtranslation.go.jp/ja/laws/view/4032)

Such a trademark will conflict with the trademark rights of others, so the “early bird gets the worm”.
The early bird gets the worm.

Other reasons for refusal include, for example

• Trademarks identical/similar to national flags, chrysanthemum emblems, orders, medals of honor, or foreign flags: ( as they are related to the dignity of the state, imperial family, etc.)
• Trademarks containing the portrait of another person or the name of another person or a well-known pseudonym, artistic name or pen name, or a well-known abbreviation thereof (except those with the consent of that other person). ：(because it involves the personality rights of others.)

How do I deal with reasons for refusal?

How can I avoid reasons for refusal?

Some marks and words cannot avoid reasons for refusal from the outset (i.e. they cannot be registered by any means).
If a candidate mark for which you want to apply for a trademark is such a thing, you need to take action, e.g. by changing the trademark.

For example, if a textual trademark is a “trademark consisting solely of words indicating quality, etc.”, it is possible to avoid reasons for refusal by adding a graphic to the trademark to make it into a logo mark.

Conduct a preliminary trademark search before filing a trademark application

Do a trademark search in advance before applying for a trademark

First of all, it is important to search and investigate in advance whether there is any conflict with the trademark rights of others!
If you find that your trademark clashes with someone else’s trademark rights after you have filed your application, there is a non-zero chance that you will be sued for trademark infringement by that other person.

Although anyone can search to see if someone else’s trademark has been registered first, it is not necessary to do so.
However, if you entrust your application to a patent attorney, he or she can also check for other reasons for refusal.

If you are involved with someone else’s rights, obtain their consent.

If the name of the applicant is different from the name of the applicant, such as when applying for a designer’s name in the name of a company, you should obtain a letter of consent beforehand.
By submitting this to the Patent Office after the application, you may be able to avoid subsequent reasons for refusal.

How do I resolve a reason for refusal?

Use a procedural amendment to narrow the scope of rights you wish to obtain.

For example, if the designated goods or services covered by someone else’s rights are only partially covered and are not important, you may be able to easily eliminate the reason for refusal by deleting the covered designated goods or services.

Adjusting your rights with others

For example, if you have a trademark registered by someone else, one option is to take it over or cancel it through a trial for cancellation of non-use.

Argue in a letter of opinion that there is no reason for refusal

A letter of opinion (Argument) is used to argue, for example, that

• The applicant’s trademark is not similar to another’s registered trademark.
• The applicant’s trademark is not simply a word that indicates quality.

If these arguments, together with sufficient grounds, are submitted, it may be possible to resolve the reasons for refusal.
In addition, if you have used the above-mentioned procedural amendments or if you have adjusted your rights with others, you may also inform the examiner of this in your written opinion.

Know the reasons for the refusal of your trademark registration and deal with them calmly

It is common to receive a Notice of Reasons for Refusal when filing a trademark application, but many of them can be easily overcome if handled correctly.
First, find a professional (patent attorney) who is experienced in dealing with notices of reasons for refusal.

Okay, so you don’t need to be scared when you receive a Notice of Reason for Refusal.
I’d start by finding a trademark expert to talk to!!!

HARAKENZO WORLD PATENT & TRADEMARK, which operates Amazing DX, is a group of intellectual property professionals with extensive experience in trademark registration.
If you have received a notice of reasons for refusal and are having trouble, please contact us.

Feel free to consult a patent attorney!

Are you worried about your trademark all by yourself?

If you have any problems, please contact our experienced trademark attorneys!