Two Major Reasons for Refusal in Japan – 外国向けに動画を公開しました
Two Major Reasons for Refusal in Japan
We have just published a video where we share the “Two Major Reasons for Refusal in Japan” and how to overcome these refusals.
Descriptions (Article. 6.1 & 6.2)
The first major reason for refusal that you have possibly seen before is the description refusal. As you may have noticed, the Japan Patent Office is very strict on how the goods and services are described and issues a refusal when the descriptions are vague or broad.
Intent to Use the Trademark (Article. 3.1 Main body)
The second major reason for refusal is the lack of intent to use the trademark. The JPO mechanically issues this refusal if the designated goods and services extend to more than 22 subclasses 、 one subclass for retail services in one intertbnational class.
How to overcome the refusals
Now I am going to explain how these refusals can be overcome. First, for the description refusal, the examiner normally puts his or her suggested amendment in the refusal. If the applicant agrees with the examiner’s suggested description, the refusal can be overcome simply by submitting the amendment accordingly. we do offer a reasonable price for submitting this type of amendment.
If the applicant does not agree with the examiner’s suggestion, then a written argument can be submitted to further describe the goods and services. The examiner would then provide further suggestions. In our practice, we often contact the examiner before submitting such argument, however.
For the second reason for refusal, which is a lack of intent to use, if the trademark is currently in use, then an evidence of use can be submitted. Or if the trademark is not in use, then a declaration can be submitted along with the business plan. The requirements for such declaration are not so strict. It should simply state the applicant intends to use the trademark in near future.
At our firm, we have a ready to fill out declaration form for you, so that the refusal can be overcome easily and cost efficiently.
We hope that our video was informative. We mentioned two major reasons for refusals in this video. And of course there are other reasons, such as the refusals based on similarity or a lack of distinctiveness. We sure have a lot of experiences with difficult cases also, and if you ever need assistance with Japanese applications, please feel free to let us know.