Article 3(1) Refusals for Class 35 Retail Services in Japan

2026-08-24

When filing a trademark application in Japan, applicants sometimes designate multiple retail or wholesale services in Class 35.

For example, Class 35 may include services such as the provision of benefits to customers in the course of retail or wholesale business involving particular goods.

However, where an application covers retail services relating to several different categories of goods, the Japan Patent Office (JPO) may question whether the applicant actually conducts, or genuinely intends to conduct, all of those retail businesses.

In such cases, the JPO may issue a refusal under Article 3(1) of the Japanese Trademark Act on the ground that there is reasonable doubt as to the applicant’s use or intent to use the trademark.

This article explains when such refusals may arise, how Japan’s similarity group codes are relevant, and the main options available for overcoming the refusal.

The Use Requirement under Article 3(1)

Article 3(1) of the Japanese Trademark Act provides, in principle, that a trademark may be registered where it is used in connection with the applicant’s own goods or services.

Accordingly, if the JPO has reasonable doubt as to whether the applicant uses, or intends to use, the trademark for the designated goods or services, an objection may be raised under Article 3(1).

In practice, the JPO does not simply look at whether the trademark itself has already been used.

Instead, it considers whether the applicant is actually engaged in, or has concrete plans to engage in, the business relating to the designated goods or services.

When Can an Article 3(1) Refusal Arise for Retail Services in Class 35?

Under the JPO Examination Guidelines, use or intent to use may be questioned in several situations involving retail services.

1. An Individual Applicant Designates General Retail Services

Japan recognizes “general retail services,” which broadly cover the retail or wholesale of a wide variety of goods, including clothing, food and beverages, and household goods.

These services are generally intended for businesses such as department stores and general supermarkets.

Accordingly, where an individual applicant designates general retail services, the JPO will normally require confirmation that the applicant actually conducts, or intends to conduct, such a business.

2. A Company Designates General Retail Services but Its Business Cannot Be Confirmed

Even where the applicant is a company, the JPO may raise an objection if its own investigation does not establish that the applicant is engaged in general retail services.

3. The Application Covers Multiple Dissimilar Retail Services

This is one of the more common situations in practice.

Where an application designates retail services relating to different fields of goods, the JPO may consider it unusual for a single business to operate all of those retail activities.

The JPO may therefore require the applicant to demonstrate actual use or a genuine intention to use the trademark for each of the relevant retail service categories.

The key concept in determining whether the retail services are considered similar is Japan’s similarity group code system.

What Are Similarity Group Codes?

The JPO assigns similarity group codes to goods and services for the purpose of assessing similarity between them.

For retail and wholesale services in Class 35, the relevant codes generally fall within the range 35K01 to 35K99.

If several designated retail services fall within the same retail-service similarity group, they are generally treated as belonging to a single group for the purpose of this examination.

By contrast, if an application covers, for example:

Retail Service A: 35KXX
Retail Service B: 35KYY

and the two services belong to different retail-service similarity groups, the application may be regarded as covering multiple dissimilar retail services.

This may trigger an Article 3(1) objection.

Importantly, for this purpose the JPO focuses on the 35K similarity group code assigned to the retail service itself, rather than merely looking at the similarity group code of the underlying goods being sold.

The 23-Similarity-Group Rule

Article 3(1) use inquiries are not limited to retail services.

As a general rule, where an application designates goods or services covering 23 or more similarity groups within a single class, the JPO may consider the scope of the application unusually broad and may question whether the applicant genuinely uses or intends to use the trademark for all of them.

This rule can also apply within Class 35.

For example, an application may include retail services together with advertising, business consultancy, employment information services and other Class 35 services.

If the total number of similarity groups reaches 23 or more, an Article 3(1) objection may arise independently of the rule concerning multiple dissimilar retail services.

Accordingly, when reviewing a Class 35 specification, it is useful to check both:

whether multiple dissimilar retail-service similarity groups are included; and
whether the class as a whole covers 23 or more similarity groups.

How Can an Article 3(1) Refusal Be Overcome?

There are several possible approaches.

Submit Evidence Showing That the Business Is Already Being Conducted

If the applicant is already conducting the designated retail or wholesale business, evidence of that activity may be submitted.

The JPO identifies materials such as the following as examples of acceptable evidence:

catalogues or brochures showing the goods handled by the applicant;
photographs of stores and the goods sold there;
order forms, delivery notes, invoices and receipts; and
newspaper, magazine or online articles describing the applicant’s business and products.

For retail services, the applicant generally needs to establish its business activities for each relevant retail-service similarity group.

Accordingly, evidence relating to only one retail field may not be sufficient where several dissimilar retail-service groups are covered by the application.

Submit a Declaration of Intent to Use and a Business Plan

It is not necessary for all of the designated services to have commenced by the filing date.

Under the JPO’s examination practice, an applicant may establish an intention to use the trademark where it plans to commence the relevant business within approximately three to four years after the filing date.

In this situation, the applicant will generally submit:

a written declaration clearly stating its intention to use the trademark; and
documents showing the preparations being made for the planned business.

The JPO guidelines provide examples of an intent-to-use declaration and a business schedule showing matters such as the planned opening of a store and the expected commencement date of sales.

If the proposed business appears insufficiently concrete, the JPO may request further materials supporting the feasibility of the plan.

Accordingly, a business plan should preferably explain matters such as when the services will commence, which services will be provided, how the retail or wholesale business will operate, and what preparations have already been made.

Delete Some of the Designated Services

If evidence of use or concrete business plans cannot be provided, another option is to delete some of the designated services.

For example, if an application contains several dissimilar retail-service similarity groups, the applicant may retain the services belonging to one 35K similarity group and delete the others.

The JPO Examination Guidelines expressly recognize that an Article 3(1) objection arising from multiple dissimilar retail services may be overcome by amending the application so that only one relevant retail-service group remains.

Similarly, where the objection arises because one class covers 23 or more similarity groups, goods or services may be deleted so that the total number is reduced to 22 or fewer.

Consider a Divisional Application

Where the applicant does not wish to abandon certain designated services, a divisional application may also be considered.

For example:

Original application: retail services in similarity group 35KXX
Divisional application: retail services in similarity group 35KYY

In this way, retail services belonging to different similarity groups may be separated into different applications.

If each application contains only one retail-service similarity group, an Article 3(1) refusal based specifically on the inclusion of multiple dissimilar retail services in the same application should generally no longer arise.

This can be particularly useful where the applicant wishes to preserve the original filing date for services that would otherwise need to be deleted from the original application.

However, a divisional application must satisfy the requirements of the Japanese Trademark Act, and the appropriate division will depend on the procedural status and specification of the original application.

In addition, a separate use or intent-to-use issue may still arise in exceptional circumstances, for example in relation to general retail services or where the JPO otherwise has reasonable grounds to doubt the applicant’s genuine intention to use the trademark.

Is Registration for Retail Services Always Necessary?

It is also worth considering whether Class 35 retail services are actually required for the applicant’s business.

For example, if a company sells cosmetics under its own brand through an e-commerce marketplace or its own website, protection for the trademark in relation to the cosmetics themselves will generally be of primary importance.

A Class 35 retail-service registration becomes more relevant where the trademark is also used to identify the retail service itself, such as the name of a store or an online shop.

Accordingly, when an Article 3(1) refusal is raised against retail services, it may be worth considering not only how the objection can technically be overcome, but also whether registration for all of the designated retail services is commercially necessary.

Conclusion

When an application in Japan designates several retail services in Class 35, an Article 3(1) refusal may arise if the services fall within different retail-service similarity groups.

Depending on the circumstances, the applicant may respond by:

submitting evidence of existing business activities;
submitting a declaration of intent to use together with a concrete business plan;
deleting unnecessary designated services; or
considering a divisional application for services that the applicant wishes to retain.

It is therefore advisable to review the relevant similarity group codes and the applicant’s actual or planned business activities before filing a Japanese trademark application covering multiple Class 35 retail services.