Frequent Provisional Refusal in Japan

Introduction

A frequent ground for refusal refers to the main paragraph of Article 3(1) of the Japanese Trademark Act, which requires “actual use” or “intent-to-use.”

This provisional refusal has been issued more often than before due to the revision of the Guidelines for Examination. Hence, we would like to explain the trademark examination practice in Japan, particularly regarding “Subclass” and “Similar Group Code,” both strongly related to said provisional refusal; in case this provisional refusal is issued; and how we should deal with it.

Subclass and Similar Group Code

In Japan (as in some other countries, e.g., China, South Korea, Taiwan), all goods and services are classified into a “Subclass” in each international class.

The subclass is allocated as a “Similar Group Code” by the Japan Patent Office (“JPO”) for their convenience of examination.

It should be noted that goods or services identified by the same “Similar Group Code” are presumed to be similar to one another. For example, briefcases, shoulder bags, suitcases, trunks, handbags, rucksacks, card cases, notecases, purses, wallets, etc. are allocated as “Similar Group Code 21C01” and covered by the subclass heading “bags and the like; pouches and the like” in class 18. The JPO treats these goods as similar to one another for the purpose of examination.

This presumption is rebuttable; however, it is, in practice, difficult to do so, in particular at the examination stage. You can see “Subclasses” and “Similar Group Code” at the JPO’s website: https://www.jpo.go.jp/system/laws/rule/guideline/trademark/ruiji_kijun/ruiji_kijun12-2023.html. (Please note that this website itself is written in Japanese; however, if you scroll down, you will find pdf documents numbered 1 to 45. These are whole lists of goods and services in each international class, with English translations. Or you may search for specific goods or services under “Goods/Service Name Search” on the JPO’s database: https://www.j-platpat.inpit.go.jp/t1201 ) (You may see the English version if you click “English” on the upper right of the page.)

Under what circumstances may the provisional refusal be issued?

The main paragraph of Article 3(1) of the Japanese Trademark Act stipulates:

Any trademark to be used in connection with goods or services pertaining to the business of an application may be registered, unless …

The JPO’s Guidelines for Examination interpreting the underlined portion above were revised and took effect on April 1, 2018. Due to this revision, the main paragraph of Article 3(1) has been more strictly applied.

To be specific, as a general rule (meaning that there are some exceptions), a provisional refusal requesting submission of documents showing “actual use” or “intent-to-use” is issued if a trademark application covers

• 23 or more “Similar Group Codes” per international class or
• 2 or more “Similar Group Codes” starting with 35K as far as “retail or wholesale services” is concerned.

The important point to note is that we must have proof for each “Similar Group Code.” It should be noted, however, that unlike most countries, it is sufficient to submit documents showing an applicant conducts such business, and it is not required to prove the mark at issue itself is actually used. This is probably because the possibility that the applicant uses the mark at issue can be considered. In this sense, the “actual use” or “intent-to-use” requirement seems more relaxed than other countries.

Suppose a trademark application designates the subclass headings “Binding agents for ice cream; Aromatic preparations for food, not from essential oils; Tea; Prepared coffee and coffee-based beverages; Ice; Confectionery; Bread and buns; Seasonings; Ice cream mixes; Unroasted coffee beans; Cereal preparations; Chocolate spread; Sushi; Yeast; Instant confectionery mixes; Pasta sauce; By-product of rice for food [Sake lees]; Husked rice; Gluten for food; Flour” in class 30. In this case, the provisional refusal is issued because there are 24 “Similar Group Codes,” i.e., 01A01, 04D01, 29A01, 29B01, 29D01, 30A01, 31A01, 31A02, 31A03, 31A04, 31A05, 31B01, 31D01, 32D04, 32F03, 32F04, 32F06, 32F08, 32F09, 32F10, 32F14, 33A01, 33A02 and 33A03, in one class (the general rule (1)).

Another example is that if a trademark application designates “retail or wholesale services for clothing; retail or wholesale services for foods and beverages,” the provisional refusal is also issued. This is because there are 2 “Similar Group Codes” starting with 35K, i.e., 35K02 and 35K03 (the general rule (2)).

How should we deal with the provisional refusal?

Once the provisional refusal is issued, we may take any combination of the following options:

• Submit documents showing the applicant sells goods or provides services for each “Similar Group Code.” Such documents may include catalogues, ads, invoices and/or printouts from the applicant’s website which target the Japanese market.
• Submit both “Declaration of Intent-to-Use” and “Business Plans” if the applicant has not yet started a business in Japan.
• Restrict the designated goods or services so that the number of “Similar Group Codes” can be 22 or less per international class (or 1 as far as “retail or wholesale services” in class 35 is concerned).

In the case of a Japanese national application (not a Madrid Protocol based application), filing a divisional application is also an option. Unfortunately, it is not permitted to divide a Madrid Protocol based application.

Practical Tips

As shown above, a provisional refusal based on the main paragraph of Article 3(1) has more often been issued. To avoid this, it is, as a matter of course, important not to designate unnecessary goods or services when filing. Generally speaking, listing “Class Headings” of NICE Classification is more likely to trigger this provisional refusal. We hope the above explanations will be of help to you.