[Madrid] Changes to the payment system for individual fees, and method for sending certified copies of registration decisions after April 1, 2023

March 13, 2023

In accordance with the revision of the Trademark Act, "1. Payment system for individual fees" and "2. Method of sending certified copies of registration decisions" will be changed as follows effective April 1, 2023.

1. Payment system for individual fees

The Japan Patent Office (JPO), as the designated contracting party, had adopted a payment system consisting of two-part individual fees in accordance with Rule 34(3)(a) of the Regulations under the Madrid Protocol.

The JPO has now adopted a payment system wherein fees are only payable at the time of filing (a lump-sum payment system) by withdrawing the notification made under the rule, and amending the Trademark Act (Article 68-30, 68-19(1) and 68-35).

2. Method of sending certified copies of registration decisions

Regarding international applications for trademark registration, the new established Article 68-18-2 of the Trademark Act enables the JPO to send a certified copy of a registration decision to each overseas holder of an international registration via the International Bureau, regardless of whether or not the holder has appointed a local representative in Japan.

More specifically, the certified copy is sent to the holder as an attachment to the statement of granting protection.

There is no change in the operation of sending registration certificates.

3. Scope of the Revised Act

The revised Trademark Act will be applied as follows:

	Payment system	Method to deliver certified copies of registration decisions
Applications or subsequent designations whose filing date* is on or before March 31, 2023	Two-part payment	Sent by mail to the holder or his/her local representative in Japan
Applications or subsequent designations whose filing date* is on or after April 1, 2023	Lump-sum payment	Sent electronically to the holder or his/her International Bureau (IB) representative via IB (attached to the Statement of grant of protection)

Please note that the two-step payment system also applies to cases where the international registration or subsequent designation date is filed on or after April 1, 2023, and the date of acceptance by the Office of Origin (= filing date*) is on or before March 31, 2023.

In such cases, the establishment and registration of the trademark right will not be registered unless the second part of the individual fee is paid.

[Last updated 13 March 2023]

Contact

Office for International Design and Trademark Applications Japan Patent Office E-mail: PA1B00@jpo.go.jp   Registration Office Japan Patent Office E-mail: PA1300@jpo.go.jp