【Trademark Q&A:Japan】Q30. If you want to register a trademark overseas, should you go through the Madrid Protocol?

A. The Madrid Protocol filing has many benefits.

  • Reduction of expenses
  • Easy application document creation
  • The examination is quick
  • Simplification of rights management
  • Extension of rights by subsequent designation

These are the main advantages of the Madrid Protocol application. Keep in mind, however, that if you have a small number of countries to apply for, the cost may be higher. In addition, you may not apply to countries that are not members of the Madrid Protocol.

【Trademark Q&A:Japan】Q29. What is the Madrid Protocol?

A. The Madrid Protocol (Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks) establishes a trademark in a designated Contracting Party by receiving an international registration in the International Register maintained by the World Intellectual Property Organization (WIPO) International Bureau and it is a treaty that can secure protection. Japan has been a member of the Convention in 1999, and it has become possible to obtain trademark protection in foreign Contracting States with simple, quick means and at low cost. As of June 2019, 104 countries are members.

【Trademark Q&A:Japan】Q28. What is the priority of the Paris Convention?

A. The priority of the Paris Convention means that an application for the registration of the first patent or trademark registered in its own country (first-country application) is filed by another ally within a certain period of time (second-country application) Is given to The judgment of novelty, etc., that was recognized at the time of filing the first application is also valid for the second application. The fixed period is 12 months from the date of the first application for a patent and 6 months from the date of the first application for a trademark. When applying for a second country, you will need to prepare a translation, application documents for the country in which you seek protection, etc., each of which will benefit for a certain period.

【Trademark Q&A:Japan】Q27. What is the Paris Convention?

A. The Paris  Convention is a treaty on an industrial property that was enacted on March 20, 1883, and entered into force on July 7, 1884.

Japan joined in 1899, and the Member States have the freedom to take legislative measures on industrial property rights (industrial property rights). For example, you can specify what the patent requirements and how the rights will be enforced, as long as they do not violate the provisions of the Paris Convention. The three principles are the principle of national treatment, the priority system, and the principle of patent independence in each country.

Priority, which is considered particularly relevant when acquiring intellectual property rights overseas, arises based on patent applications, applications for utility models, designs, and trademarks.

【Trademark Q&A:Japan】Q24. Is it necessary to acquire intellectual property rights such as trademark rights overseas?

A: Since the protection of trademarks is governed worldwide by territoriality (protection within the country), the rights obtained by proceeding with the Japanese Patent Office are valid only in Japan. is. Therefore, if you want to obtain a trademark right in order to take countermeasures against counterfeit or counterfeit products internationally, you will need to separately file with the patent offices of each country.

However, using a system based on the Madrid Protocol it is possible to carry out procedures without having to go through different procedures and languages ​​in each country, which is convenient.

【Trademark Q&A:Japan】Q23. What happens if there is any problem with the trademark I applied for?

A: If the substantive examination finds a reason for failure to register, the JPO will notify you of the reason for refusal. On the other hand, the applicant may be able to resolve the reason for refusal by giving an opinion (submitting a written opinion) or amending the designated goods / services (submitting a written amendment of procedure). If the reason for refusal is not resolved, a rejection will be decided and the application will be rejected.

【Trademark Q&A:Japan】Q22. What is trademark classification?

A: Classification is determined by a Cabinet Order, and it divides goods and services into some categories according to their attributes. When registering a trademark, the registration fee will differ depending on how many categories the target product covers. In addition, trademarks may not be able to be registered unless appropriate divisions are set, or the use of trademarks similar to third parties may be forgiven. Therefore, it is very important to determine exactly which category a product or service belongs to. In Japan, it is divided into 45 types. Although the conventional classification was Japan’s own, it was revised in accordance with the International Classification in 2005 by joining the “Multilateral Agreement on the International Classification of Goods and Services for Registration of Marks (Nice Agreement)”. It has been done to the present. Classification can be confirmed by the JPO’s “Similar Products / Services Examination Standards”.