When an applicant receives a provisonal refusal under the Madrid Protocol from the Japan Patent Office, the applicant should immediately contact a Japanese associate for a legal advice. In response to the refusal, there are the following options.
- Filing of an argument stating that the trademark is not similar to a cited trademark and/or designated goods, or services are not similar to those of the cited trademark
- Filing of an amendment to delete the goods or services which conflict with the cited trademark
It should be noted that before the Japan Patent Office, a letter of consent does not overcome the rejection. To overcome the rejection by assignment, the assignment needs to be actually recorded in the Japan Patent Office during pendency of the trademark application.
Most of the provisonal refusals from the Japan Patent Office include suggestions from examiners in charge, which are usually written on the last page of a refusal. It is essential for the applicants to read carefully the suggestions from the examiners. Many of the rejections could be overcome by following suggestions such as deleting some of the designated goods or services.
Please contact us for a free, no obligation quote (cost estimate) for a response to a provisional refusal under the Mardrid Protocol, by filling out the form to submit your quote request and we will contact you shortly.