The response to Provisional Refusal consists of the basic action common to all PRs and the individual action specific to each PR. If you are having trouble deciding which individual action to take, please do not hesitate to contact us in advance.

 

■ Basic action

(1) Filing a Notification of Acceptance of Power of Attorney, which is required for taking over prosecution

(2) Checking a Certificate of Registration and forwarding it to the registrant by registered mail, if registered

(3) Managing a part extended to Japan, if registered (e.g. If the Opposition or Trial is raised against it, we will let the registrant know immediately.)

 

Costs:

- Attorney’s fee: 16,000 Yen per application

- Official fee: No charge

 

Documents:

- Original Power of Attorney simply signed by you

Neither notarization nor legalization is required. The late filing of POA is acceptable at extra cost. The POA form will be provided on receipt of order instructions.

 

■ Individual action

(1) Filing an Amendment as suggested by the Examiner

If you accept the Examiner’s suggestion of amendment, which is given in paragraph VI of the NOTIFICATION OF PROVISIONAL REFUSAL, the Provisional Refusal will surely be overcome. From our experience, this response accounts for 65% to 75% of the responses to Provisional Refusal.

 

Costs:

- Attorney’s fee: 9,000 Yen per application

- Official fee: No charge

 

Documents:

- None

 

(2) Filing an Amendment different from one as suggested by the Examiner

If you are reluctant to accept the Examiner’s suggestion of amendment, although an amendment is acceptable, this response can be taken.

 

In this case, we would like you to let us know the descriptions of goods/services that you want to give. If they are considered to be acceptable, we will contact the Examiner for acceptation of them and file such an Amendment under his/her approval.

 

An important point to note here is that in Japan, the number of groups within which the specified goods/services are similar to each other must be within 7 in each Class. If it comes to 8 or more in one Class, the Examiner will call for a Declaration of Intent to Use (with business plan) or a Proof of Use on the specified goods/services in each group since in such a case, it is doubtful whether the mark is going to be used or has been used for all the specified goods/services in the Class. If neither can be filed, the applicant will have to limit the specified goods/services within 7 groups in the Class. We can then advise about which group each of them belongs to. If either can be filed, it should be filed with the response (2). We can provide the forms. Of course, the amendment must be within the scope of the goods/services specified at the time when Japan was designated.

 

Costs:

- Attorney's fee: 14,000 Yen to 28,000 Yen per application (included for contacting the Examiner)

- Official fee: No charge

 

Documents:

- None

 

(3) Filing an Argument

This is for arguing that the applied-for mark meets the requirements for registration of mark.

 

Most of the serious Provisional Refusals are issued on the ground that the application can conflict with another person’s prior registration, or it lacks distinctiveness in relation to its specified goods/services. However, we are convinced that whether we can prepare and file a strong Argument against it or not depends on how major inconsistencies between the Provisional Refusal and the previous registrations or Trial Decisions we can point out therein. We therefore have always collected and filed as much information on registration or Trial Decision helpful for registration of mark as possible.

 

Costs:

- Attorney's fee: 40,000 Yen to 60,000 Yen per application

- Official fee: No charge

 

Documents:

- None

 

Filing an Appeal Trial

If the filing of an Argument is not accepted and the Decision of Rejection is eventually issued, the applicant may file an Appeal Trial against it, in which he can further appeal that the applied-for mark meets the requirements for registration of mark.

 

The filing of an Argument is only ruled by the same Examiner as examined the application, whereas the filing of an Appeal Trial is ruled by three Trial Examiners. Accordingly, more reasonable decision can be expected in the Appeal Trial, and when we are in doubt about the Decision of Rejection, we strongly recommend that the applicant file this response.

 

Costs:

- Attorney's fee: 70,000 Yen to 90,000 Yen per application

- Official fee: 55,000 Yen for one Class (40,000 Yen for each additional Class)

 

Documents:

- None

 

(4) Filing a Cancellation Trial

This is for canceling registration of a cited prior mark due to its non-use. This Trial is to be filed against each registration.

 

The statistics of the JPO indicate that approximately 75% of the whole registered trademarks are not in use in Japan. Therefore it could be very effective to file this response to overcome a cited mark. We can beforehand give some information about use of a cited mark(s) at your request and it will be able to suggest the possibility of success in this response.

 

Costs:

- Attorney's fee: 60,000 Yen per registration (included for filing a Petition for keeping the application alive until the Trial Decision is issued) (Extra fee [15,000 Yen to 30,000 Yen] is applied to attendance at oral proceedings or filing of a written Refutation, if applicable.)

- Official fee: 55,000 Yen for one Class (40,000 Yen for each additional Class)

 

Documents:

- Original Power of Attorney simply signed by you

Neither notarization nor legalization is required. The late filing of POA is acceptable at extra cost. We will e-mail you our POA form on receipt of your order instructions.

 

(5) Filing an Invalidation Trial

This is for invalidating (or retroactively canceling) registration of a cited prior mark due to its illegality. This Trial is to be filed against each registration.

 

However, the success rate in the filing of an Invalidation Trial is not so high (30% to 35%) since the invalidating of registration means overturning the administrative action of registration by the JPO and the requirements for invalidity would be very strictly applied to this Trial. However, according to our experience, in case an applied-for mark has been well known in its home country since before the filing date of a cited mark and consists only of device and/or coined word, there would be a good chance to invalidate registration of a cited mark through this Trial.

 

Costs:

- Attorney's fee: 100,000 Yen to 150,000 Yen for one Class

(See “Filing a Cancellation Trial” for further information.)

- Official fee: 55,000 Yen for one Class (40,000 Yen for each additional Class)

 

Documents:

- Original Power of Attorney simply signed by you

(See “Filing a Cancellation Trial” for further information.)

 

(6) Filing an Opposition

A registered mark is published for opposition purpose approximately one month after registration, and therefore if a cited mark is published, you may also file an Opposition to the registration due to its illegality within two months after publication.

 

The filing of an Opposition is less expensive than that of an Invalidation Trial and is ruled under procedures equivalent to Invalidation Trial procedures. However, the success rate in the filing of an Opposition is very low (15% to 20%) for the same reason as in an Invalidation Trial.

 

Costs:

- Attorney's fee: 60,000 Yen to 90,000 Yen for one Class

(See “Filing a Cancellation Trial” for further information.)

- Official fee: 11,000 Yen for one Class (8,000 Yen for each additional Class)

 

Documents:

- Original Power of Attorney simply signed by you

(See “Filing a Cancellation Trial” for further information.)

 

(7) Assigning the application an owner of the cited mark(s) and obtaining, after registration, assignment of the registration from him

This is for enabling conflicting registrations to amicably coexist with each other.

 

In this case, we contact an owner of the cited prior mark(s) to ask him to obtain assignment of the application and to return, after registration of the application in his name, the registration back to you. This response can be taken as an alternative to the Letter of Consent System, which has not been adopted under the Japanese Trademark Law, and it enables you to obtain registration of your mark without fail. We can beforehand give some information about use of a cited mark(s) at your request and it will be able to suggest the possibility of success in this response. Please note, however, that an application (MM5) for transfer (return) of the registration is to be filed with your local Trademark Office or WIPO by yourself or your registered representative.

 

Costs:

- Attorney's fee: 80,000 Yen to 120,000 Yen per application (for negotiating with an owner of the cited mark[s]; for filing a Petition for keeping the application alive until WIPO notifies the JPO of transfer of the application; for filing MM5 for recordal of transfer of the application with the JPO [only if the assignee is a Japanese company or individual])

 

- Official fee: 4,200 Yen (for filing MM5 with the JPO)

- Consideration for owner of cited mark: 100,000 Yen to 300,000 Yen

 

Documents:

- None

 

 

 

If you need any other information about our services, please do not hesitate to contact us.