Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

A Madrid Protocol application designating Japan is deemed to be a Japanese trademark application filed on its international registration date.  However, there are some differences in procedures from domestic applications.  In addition, certain points unique to Japan have to be taken in consideration when designating Japan. 
Here are some useful tips for the applicants seeking trademark registration in Japan via Madrid Protocol.

Second Part of the individual fee

The JPO has adopted an individual fee consisting of two parts.  The second part will have to be paid only if the JPO is satisfied that the mark which is the subject of the international registration qualifies for protection.  The date by which the second part must be paid, and the amount due, will be notified to the International Bureau.  The applicant has to pay the second part directly to the International Bureau.
If the second part is not paid by the date, the International Registration in the International Register shall be cancelled with respect to Japan.

Indication of designated goods/services

1. Not all Class Headings of the Nice agreement are accepted

The JPO will require amendments of the indications to meet Japanese practice if your indications of goods/services are considered to be too vague, which typically appear in Class Headings of the Nice agreement.

2. Practice of verification of "use" or "intent to use"

Basically, the JPO does not require any documents to verify "use" or "intent to use" of a trademark.  However, if a Statement of Use or Declaration of intent-to-Use is not submitted along the application in the following cases of 1) and 2), the applicant will automatically receive a Provisional Rejection from the JPO on the ground that the indications are considered to be a "broad scope".

1) An application designates goods or services belonging to 23 or more similar goods in one class*1,
2) an application designates retail services or wholesale services in the specific cases where,
  2-1) the application filed by an individual designates so-called "general retail services or wholesale services,
  2-2) the application filed by a corporation designates so-called "general retail services or wholesale services but the fact finding of providing services 
by the applicant under the examination by the examiner's authority fails, or
  2-3) the application designates plurality of retail services or wholesales services deal in "specific goods" which are categorized into two or more similar codes.

Submission of a Statement of Use or Declaration of intent-to-Use, or limitation of the designated goods/services by an amendment will overcome the Provisional Refusal.

*1: Our previous post explains about the similarity code. Please refer for further information: "Identification of similar goods and services in trademark examination practice"
*2: Regarding the cases of 2), please refer to our previous post: "Interested in obtaining a trademark right for retail services or wholesale services?"

Responding to a Notification of Provisional Refusal

1. Local agent

An applicant has to appoint a local agent to respond a Notification of Provisional Refusal from the JPO.

2. Direct submission of a response to the International Bureau (IB) of WIPO

The form MM6 and MM5 can be submitted directly to the IB in the following cases:
  The form MM6 – to limit the designated goods/services
  The form MM5 – to change the holder of the cited trademark of the present application

Direct submission to the IB will save cost, but to inform the Japanese examiner of such action is recommended.

3. Term to respond a notification

The term to respond a notification is three months from the date of pronunciation of the notification.  The term is extendable for one month by filing a request of extension.

Disclaimer and Letters of Consent

1. Disclaimer system 

There is no disclaimer system in Japan.  Therefore, basically, a descriptive part in your trademark will be considered in a similarity test.

2.  Letter of consent system 

There is no letter of consent system in Japan.  Therefore, a letter of consent will be ignored and not able to overcome a Provisional Refusal on the ground that your trademark is similar to a prior registered trademark.

Division and conversion of an application

Division and conversion of an application are not allowed for a Madrid Protocol application designating Japan although these procedures are accepted for domestic applications.



Please refer to our "Madrid Protocol page" for further information on procedures for obtaining trademark registration in Japan via Madrid Protocol:
http://en.aigipat.com/trademark/madridProtocol.html

Detail information is provided on the JPO's website:
https://www.jpo.go.jp/e/system/trademark/madrid/japan_under_the_madrid_protocol.html

 
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HIROTA, Miho
AIGI Intellectual Property Law Firm