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Home > FAQs > Madrid Protocol

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Madrid Protocol

 11-1. What should I be aware of when I apply for trademark registration under the Madrid Protocol (Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks) designating Japan?

Please refer to the following URL for some notes you need to give attention to when you designate Japan in your international trademark registration.

http://www.jpo.go.jp/torikumi_e/t_torikumi_e/japan_under_the_madrid_protocol.htm

Especially, you have to pay attention to the payment of fees concerned with an international trademark registration designating Japan. Our Office has adopted an individual fee consisting of two parts in accordance with Rule 34(3)(a) of the Common Regulations under the Madrid Protocol.

Therefore, the first part of the individual fee, which corresponds to an application fee, will have to be paid at the time of international registration or the subsequent designation. The second part of the individual fee, which corresponds to a registration fee, will have to be paid within the prescribed period mentioned in the "NOTIFICATION OF SECOND PART OF INDIVIDUAL FEE" which will be issued with "STATEMENT OF GRANT OF PROTECTION". Both fees are to be paid directly to the International Bureau of the WIPO.

Please note that if the second part of the individual fee is not paid within the prescribed period, the designation of Japan in the international registration will be cancelled.

 11-2. How can I refer to the notification of provisional refusal under the Madrid Protocol?

The Notification of Provisional Refusal is available in the ROMARIN database on the WIPO website at the following URL:

WIPO ROMARIN

http://www.wipo.int/romarin/ (External link)

Please note the following when you respond to the Notification of Provisional Refusal. Under Article 8 of the Patent Act of Japan, applicants who do not reside or who are not domiciled in Japan cannot directly conduct any procedures with the JPO. Applicants falling under this circumstance have to appoint a representative in Japan, such as a patent attorney. For your information, this same article applies accordingly to trademarks and other rights based on their respective laws. We also recommend that you consult with your representative about the procedures in detail.

See FAQ 1-6: "How can I get a list of patent attorneys in Japan?"

 11-3. How can I respond to a “Notification of Provisional Refusal” with regard to my international trademark application under the Madrid Protocol?

You can respond to a “Notification of Provisional Refusal” with regard to your international trademark registration by one of the following two measures:

i) submitting an amendment (to adjust the designated goods or services to comply with the Notification of Provisional Refusal) to our Office through a representative (it is strongly recommended that you appoint a patent attorney) who has a permanent address or residence in Japan within three months from the “date of pronouncement“ (i.e., the mailing date of the notification) or

ii) filing a request for a limitation of goods and services using the official form (MM6) with the prescribed fee with the WIPO.

For detailed information, please refer to the following URL.

http://www.jpo.go.jp/torikumi_e/t_torikumi_e/japan_under_the_madrid_protocol.htm#anchor5

 11-4. What will happen if I don’t respond to a Notification of Provisional Refusal?

If you do not respond at all to the Notification of Provisional Refusal, or if you do not resolve the reasons of refusal stated in the Notification of Provisional Refusal, the trademark application will be refused. In this connection, the JPO will send the Decision to Refuse a trademark registration to you.

If you are not satisfied with the decision, you will be able to demand an appeal trial against the decision any time within 3 months after the date of the Decision to Refuse a Trademark Registration was sent. A demand for an appeal trial will have to be made through your representative who resides in Japan.

If you do not demand for an appeal trial within the 3-month period, or if you are not successful in an appeal trial, the JPO will send a Confirmation of Total Provisional Refusal to the International Bureau (IB) of the WIPO, which will subsequently send the Refusal Confirmation to you.

Please refer to Articles 3, 4, and 69-2 of the Trademark Act.

http://www.japaneselawtranslation.go.jp/law/detail/?id=45&vm=04&re=01 (External link)

See also General Information on the Madrid System on the WIPO website.

http://www.wipo.int/madrid/en/general/ (External link)

 11-5. Why haven't I received a certificate of registration with respect to Japan, even though I already registered the trademark under the Madrid Protocol?

The JPO also issues certificates of registration (in Japanese “Touroku-sho”) with respect to Japan for trademarks that were registered under the Madrid Protocol. The certificate of registration is normally sent to your representative in Japan, so you should ask your representative in Japan about this.

In case there is no representative in Japan, the JPO will send the certificate to the holder directly.

 11-6. Why haven't I received the Notification of Second Part of Individual Fee?

The International Bureau (IB) of the WIPO handles all matters related to the payment of the second part of the individual fee (registration fee). In addition, the “Notification of Second Part of Individual Fee” is supposed to be sent from the IB to either rights-holders or their IB representatives.

If you have not received the notification, please contact the IB directly or contact your IB representative.

Please note that if you do not pay the second part of the individual fee to the IB by the time limit*, your international trademark registration with respect to Japan will be cancelled in the International Register.

*The time limit is within three months from the mailing date when the JPO sends out the Statement of Grant of Protection.

The following URL shows how to pay the fee directly to the IB of the WIPO.

http://www.wipo.int/madrid/en/fees/about_fees.html (External link)

 11-7. What should I do if I miss the time limit to pay the second part of individual fee?

If you don’t pay the second part of the individual fee by the time limit written on the “Notification of Second Part of Individual Fee” sent to you, your international trademark registration with respect to Japan will be cancelled.*

*Continued Processing (Rule 5 bis)
Where you have failed to comply with a time limit to pay the second part of an individual fee under Rule 34(3)(c)(iii), and within two months from the date of expiry of that time limit, you can submit form MM20 (Request for continued processing) to the International Bureau (IB) of the WIPO. The payment of the fee for continued processing specified in item 7.6 of the Schedule of Fees (200 Swiss francs)

If your international registration with respect to Japan has been canceled, but you still would like to register your trademark in Japan, you can submit form MM4 (Designation Subsequent to the International Registration) to the IB. However, please note that the filing date of your international trademark in Japan will be the date on which you submit the subsequent designation.

For details, please refer to the following the WIPO webpage.

http://www.wipo.int/madrid/en/filing/subsequent_designation.html (External link)

Form MM4, MM20 can be found in the following URL.

http://www.wipo.int/madrid/en/forms/ (External link)