Holders of international registrations, who seek to overcome the grounds for provisional refusals by limiting/amending the list of goods and services, have two options indicated below.

(i) Filing a request for an amendment with the JPO

The list of goods and services may be amended by filing a written request for amendment with the JPO.  

The request must be filed with the JPO through the intermediary of a representative domiciled in Japan within three months from the date of pronouncement of the Notification of Provisional Refusal.  

Please note that the procedures and the format for requesting an amendment must be in the Japanese language only.

(ii) Filing a request for a limitation with WIPO

The list of goods and services will be limited by filing a written request for limitation (MM6) with WIPO along with the official fee.

However, examiners of the JPO will not know that MM6 has been filed with WIPO until the JPO receives the notification of recording a limitation from WIPO.  As the result, the examiners may issue the Decision to Refusal a Trademark Registration.  

To avoid that, please inform the examiners of that the holder has filed MM6 with WIPO immediately.

Holders can file written requests for amendment or written opinions with the JPO.  

Holders must file the requests with the JPO through the intermediary of a representative domiciled in Japan.  Because holders, who do not reside or who are not domiciled in Japan, cannot directly conduct any procedures with the JPO.  

Holders, who have not pointed the intermediary of a representative domiciled in Japan, have to appoint a representative in Japan, such as a patent attorney.  

Also, the documents must be written in the Japanese language only.