Is Your Brand Too Simple or Descriptive? Understanding Article 3(1) Refusals

The Japan Patent Office (JPO) applies one of the strictest distinctiveness standards among major trade mark jurisdictions. Under Article 3(1) of the Trademark Act, a mark must be capable of enabling consumers to recognise the goods or services as those pertaining to a particular business. Marks that fail this test are refused — and the grounds for refusal are broader than many foreign applicants expect.

The Six Grounds for Refusal

Article 3(1) lists six categories of marks that cannot be registered:

Article 3(1)(i): Generic Marks

Marks consisting solely of a common name for the goods or services are refused. This includes the standard product name, its abbreviation, or any term commonly understood by the trade and public as referring to the product category itself. The assessment considers Japanese-language terms, well-known English equivalents, and industry-specific terminology.

Article 3(1)(ii): Customary Marks

Marks that are customarily used in the relevant trade are refused. This covers terms, symbols, or designs that have become standard practice in a particular industry — for example, the barber’s pole for hairdressing services, or common trade abbreviations that have lost any source-identifying function.

Article 3(1)(iii): Descriptive Marks

This is the most frequently invoked ground. Marks that consist solely of a sign indicating, in a common manner, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape, price, or method of production or use of the goods or services are refused. The phrase “in a common manner” is significant: a descriptive term presented in a distinctive font, stylisation, or design may escape this bar, since the provision applies only to descriptions rendered in an ordinary way.

Article 3(1)(iv): Common Surnames or Names

Marks consisting solely of a very common surname or name (e.g., Tanaka, Suzuki, Yamada) are refused. The rationale is that such names cannot serve as reliable indicators of a specific commercial source.

Article 3(1)(v): Very Simple and Common Marks

This provision catches marks that are too simple or too commonly used as symbols to function as trade marks. The JPO’s Examination Guidelines specifically identify the following as falling within this ground:

• One or two alphabetical letters (e.g., “A,” “EQ,” “FS”).
• Combinations of one or two letters with numerals (e.g., “FS12,” “3M” for vehicles).
• Simple geometric shapes (circles, triangles, squares) without additional distinctive elements.
• Commonly used numerals or number sequences used to indicate model numbers, specifications, or product types.

This ground frequently catches foreign applicants who use alphanumeric product codes as brand identifiers. In Japan, such combinations are presumed to indicate model types or specifications rather than brand origin.

Article 3(1)(vi): Catch-All Lack of Distinctiveness

This comprehensive provision refuses any mark by which consumers are not able to recognise the goods or services as those pertaining to a particular business. It catches marks that do not fit neatly into the preceding five categories but still lack the ability to function as source identifiers — for example, common slogans, widely used phrases like “I♥JAPAN,” or decorative patterns.

The “In a Common Manner” Exception

Article 3(1)(iii) applies only to descriptive terms depicted “in a common manner.” This creates an important strategic opportunity: if a descriptive word is presented in an unusual font, distinctive stylisation, or combined with a unique design element, it may avoid the refusal. The JPO recognises that the visual presentation can transform a descriptive term into a registrable mark.

However, applicants cannot amend the mark after filing. Any stylisation strategy must be built into the application from the outset.

The Acquired Distinctiveness Exception: Article 3(2)

Marks falling under Articles 3(1)(iii) through 3(1)(v) may be registered if they have acquired distinctiveness through use. Article 3(2) provides that a mark may be registered if, as a result of its use, consumers are able to recognise the goods or services as those pertaining to a particular person’s business. The evidentiary standard is high and is discussed in detail in a separate article.

Strategic Recommendations

• Avoid alphanumeric codes as primary marks: Combinations of one or two letters with numbers are presumptively non-distinctive in Japan. Use them as secondary identifiers alongside a distinctive word mark.
• Consider stylisation: If a descriptive element is important to the brand, file it with a distinctive design or font to avoid the “common manner” bar under Article 3(1)(iii).
• Test in Japanese: Assess how the mark reads in Japanese. A mark that appears distinctive in English may be descriptive or generic when transliterated into Katakana.
• File both word and device marks: A word-only application faces the highest bar. A composite mark combining the word with a distinctive logo has a better chance of registration.

Common Mistakes

• Filing alphanumeric codes without a design: “FS12” or “3M” in standard characters will be refused for almost any goods.
• Assuming common English words are distinctive: Words like “Fresh,” “Natural,” or “Smart” are widely understood in Japan and may be treated as descriptive.
• Trying to amend the mark after filing: Amendments to the mark itself are generally not permitted. The filing must reflect the final version.

Key Takeaway

Article 3(1) casts a wide net. From generic terms to single letters, from common surnames to simple shapes, the JPO applies a rigorous distinctiveness standard. The “very simple and common” bar under Article 3(1)(v) is a particular trap for foreign brands that rely on alphanumeric identifiers. The most reliable strategy is to file inherently distinctive marks and to build any necessary stylisation into the application from the start.