Information for Holders of International Registrations seeking Extension of Protection to Japan under the Madrid Protocol

Any request for territorial extension to Japan under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks shall be deemed to be an application for trademark registration filed on the date of international registration or subsequent designation under the Japanese Trademark Act. Therefore, the request shall be examined by the Japan Patent Office (JPO) in the same way as a national application is examined. If the request falls under any reasons for refusal under the Act, the JPO will issue a total provisional refusal.

For the benefit of holders of International Registrations, the JPO provides the following information regarding the most commonly issued grounds of provisional refusals, how to respond to them and the unique procedures when designating Japan.

1. Indications of goods and services

The JPO is unable to accept the indication of goods and services if its scope is considered to be too vague in Japan, even if the said indication is registered in the International Register or included in the alphabetical list of goods and services of the NICE Classification. You can search acceptable indications of goods and services in Japan by following tools.

2. Indications of goods and services appearing in the class headings of LIST OF CLASSES OF GOODS AND SERVICES WITH EXPLANATORY NOTES under the NICE Agreement (NCL(12-2024))

The JPO is unable to accept the indications of goods and services in the left column of the following table because the scope of the indication of goods and services is considered to be too vague. The indications of goods and services listed in the right column of the following table are examples of acceptable indications in Japan.

Class	Unacceptable indications of the class headings	Examples of acceptable indications of goods and services;
7	machines, machine tools, power-operated tools;	metalworking machines and tools; construction machines and apparatus; textile machines and apparatus; food or beverage processing machines and apparatus; printing or bookbinding machines and apparatus; agricultural machines and implements; packaging or wrapping machines and apparatus;
9	Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments;	Apparatus and instruments for scientific research in laboratories; nautical apparatus and instruments; surveying apparatus and instruments; photographic apparatus and instruments; cinematographic apparatus and instruments; optical apparatus and instruments; weighing apparatus and instruments; measuring apparatus; signals, luminous or mechanical; monitoring apparatus, other than for medical purposes; life saving apparatus and equipment; teaching apparatus; navigational instruments;
12	Vehicles;	aircraft; automobiles; bicycles; motorcycles; rolling stock for railways; ships;
12	apparatus for locomotion by land, air or water;	aircraft; automobiles; bicycles; motorcycles; rolling stock for railways; ships;
17	Packing, stopping and insulating materials;	packing [cushioning, stuffing] materials of rubber or plastics; cotton wool for packing [caulking]; joint packings for pipes; stops of rubber; rubber stoppers; insulators; asbestos packing;
31	Raw and unprocessed agricultural, aquacultural, horticultural and forestry products;	barley; grains (cereals); seeds; natural flowers; plants; seedlings; trees; fresh vegetables; fresh fruits; edible aquatic animals, live;
33	alcoholic preparations for making beverages;	alcoholic essences;
36	financial, monetary and banking services;	financial analysis; financial and monetary transaction services; banking services;
37	installation and repair services;	electric appliance installation and repair; installation and repair of air-conditioning apparatus; elevator installation and repair; installation and repair of computer hardware; office machines and equipment installation and repair; telephone installation and repair;
40	Treatment of materials;	cloth treating; leather staining; metal treating; water treating;
41	sporting and cultural activities;	sporting activities; organization of exhibitions for cultural or educational purposes;
42	Scientific and technological services and research and design relating thereto;	scientific and technological research and development; computer software design; industrial design;
42	quality control and authentication services;	quality control; testing, analysis and evaluation of the goods and services of others for the purpose of certification;
45	funerary services;	funerary undertaking; burial services; crematorium services; desairologists' services;

3. Trademark System for Retail and Wholesale Services in Japan

The trademarks for so-called "retail or wholesale services" can be protected in Japan, providing that the date of international registration or subsequent designation is on or after April 1, 2007. Please refer to the “Notice regarding Trademark System for Retail and Wholesale Services” on the JPO Website at Notice regarding Trademark System for Retail and Wholesale Services

4. Principal paragraph of Article 3 (1) under the Japanese Trademark Act prohibiting registration of trademarks that will not be used

A trademark which falls within the category of trademarks registrable under the Trademark Act is a trademark which is used now or which is intended to be used in the near future. The veracity of use or intention of use of the trademark in regard to all the designated goods and services is doubted if the range of the goods and services listed in one class is too wide. Therefore, such an application does not conform to the requirements as provided in the principal paragraph of Section 3(1) of the Trademark Act.

This practice applies to international registrations which are registered or subsequently designated on or after April 1, 2007.

Please see the JPO Website at Principal Paragraph of Article (PDF:139KB) for the examination guideline corresponding to the Principal Paragraph of Article 3 (1) of the Trademark Act.

5. Amendment or Limitation of goods and services to respond to the NOTIFICATION OF PROVISIONAL REFUSAL

Holders of an international registration who seek to overcome the grounds for provisional refusals by limiting/amending the list of goods and services have two options indicated below.

(i) Filing a request for an amendment with the JPO

The request for an amendment of the list of goods and services is a formal procedure according to Article 68-28 of the Japanese Trademark Act. The JPO does not require a payment of fees to file a request for an amendment. The list of goods and services may be amended by filing a written request for amendment with the JPO. The request must be presented to the JPO through the intermediary of a representative domiciled in Japan within three months from the date of pronouncement of the NOTIFICATION OF PROVISIONAL REFUSAL. Please consult your attorney in Japan for details since the procedures and the format for requesting an amendment must be in the Japanese language only.

Please note that the request for an amendment of the list of goods and services cannot be submitted directly to the JPO via e-mail.

(ii) Filing a request for a limitation with WIPO

The request for a limitation of the list of goods and services is a formal procedure according to Rule 25 of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement. The list of goods and services may be limited by presenting a written request for limitation with the prescribed fee to WIPO. Please note that the request must be filed with WIPO directly using the official form (MM6).

A limitation shall have effect when it is registered in the International Register. The limitation recorded in the International Register is effective in respect of the designation of Japan as long as the case is pending before the JPO. A case is considered to be pending before the JPO:(a) not only the period of three months from the date of pronouncement of the NOTIFICATION OF PROVISIONAL REFUSAL but also until the pronouncement of the DECISION TO REFUSE A TRADEMARK REGISTRATION, and (b) even after the pronouncement of the DECISION TO REFUSE A TRADEMARK REGISTRATION, subject to the fact that the holder has made a request for an appeal examination to the JPO within three months from the date of pronouncement of the DECISION TO REFUSE A TRADEMARK REGISTRATION.

However, the examiners of the JPO will not be aware of the fact that a request for a limitation has been filed with WIPO until the JPO receives the notification of recording a limitation from WIPO. In such cases, it is possible that the examiners of the JPO may issue the DECISION TO REFUSE A TRADEMARK REGISTRATION or the STATEMENT OF CONFIRMATION OF PROVISIONAL REFUSAL. Therefore, in order to avoid such a situation, please inform the examiner in charge via e-mail of the fact that the holder has filed a request with WIPO.

Please contact WIPO for details about the request for a limitation.

Please see WIPO Web site at http://www.wipo.int/treaties/en/text.jsp?file_id=355319( External link ) for Rule 25 of the Regulations under the Madrid Protocol and http://www.wipo.int/treaties/en/text.jsp?file_id=355319 (External link) for the official form for a limitation.(MM6)

6. Second Part of the Individual Fee

The necessity for payment of the second part of the individual fee depends on the filing date of international registration or subsequent designation. This is because the JPO had previously adopted an individual fee consisting of two parts in accordance with Rule 34 (3)(a) of the Regulations under the Madrid Protocol, which it withdrew on April 1, 2023. The details are as follows.

(i) Payment of the second part of the individual fee is necessary in cases

where Japan:

• (a) is designated in an international application that is received by the Office of origin on or before March 31, 2023;　or,
• (b) is the subject of a subsequent designation that is received by the Office of the Contracting Party of the holder on or before March 31, 2023, or is filed directly with the International Bureau of WIPO on or before that date.

Please refer to the instructions indicated in the NOTIFICATION OF SECOND PART OF INDIVIDUAL FEE, which is transmitted from the International Bureau with the STATEMENT OF GRANT OF PROTECTION or the STATEMENT OF WITHDRAWAL OF PROVISIONAL REFUSAL for the payment of the second part of the individual fee. Please note that the International Registration in the International Register shall be cancelled with respect to Japan where the second part of the individual fee is not paid within the period indicated in the NOTIFICATION OF SECOND PART OF INDIVIDUAL FEE according to Rule 34 (3)(d) of the Regulations under the Madrid Protocol.

Please refer to Rule 34 (3) of the Regulations under the Madrid Protocol on the WIPO website at http://www.wipo.int/treaties/en/text.jsp?file_id=355319 (External link)

(ii) Payment of the second part of the individual fee is not necessary

where Japan:

• (a) is designated in an international application that is received by the Office of origin on or after April 1, 2023;　or
• (b) is the subject of a subsequent designation that is received by the Office of the Contracting Party of the holder on or after April 1, 2023, or is filed directly with the International Bureau of WIPO on or after that date.

7. Links to the Japanese Trademark Act / Examination Guidelines

(i) Trademark Act

https://www.japaneselawtranslation.go.jp/en/laws/view/4032 (External link)

(ii) Examination Guidelines for Trademarks

Examination Guidelines for Trademarks

(iii) The Trademark Examination Manual

The Trademark Examination Manual

(iv)Classification

[Last updated 4 January 2024]

Contact

Question 1-5, and 7 Trademark Division TEL:+81-3-3580-6864   Question 5 and 6 Office for International Design and Trademark Applications Japan Patent Office E-mail: PA1B00@jpo.go.jp