Madrid Protocol

1. Designation of Japan

Japan may be designated in an international trademark application or subsequent designation under the Madrid Protocol.

The Japan Patent Office (JPO) examines an international registration designating Japan in substantially the same manner as a national trademark application.

If no grounds for refusal are found, protection of the trademark will be granted in Japan.

2. Provisional Refusal

If the JPO finds grounds for refusal, a Notification of Provisional Refusal will be issued through WIPO.

Typical grounds for refusal include lack of distinctiveness, similarity to a prior trademark, and unclear or unacceptable descriptions of designated goods or services.

To respond to a provisional refusal before the JPO, appointment of a qualified representative in Japan is generally required.

3. Change of Ownership

A change in ownership of an international registration is generally recorded through WIPO.

Once the change is recorded in the International Register, WIPO notifies the designated Contracting Parties, including Japan.

We can advise on any additional procedures that may be required in Japan.

4. Renewal

An international registration may be renewed every 10 years through WIPO.

For an international registration designating Japan, a separate renewal procedure before the JPO is generally not required.

The renewal should be completed through WIPO within the prescribed period.

5. Difference from U.S. Section 71

Unlike the United States, Japan does not require a declaration of use equivalent to a Section 71 Declaration to maintain protection under an international registration.

No periodic proof of use is required merely to maintain trademark protection in Japan.

However, a registered trademark may become vulnerable to cancellation for non-use if it has not been used in Japan for three consecutive years.

6. Important Points for Designating Japan

The JPO examines the descriptions of goods and services according to Japanese examination practice. Descriptions accepted by WIPO or another trademark office may not necessarily be accepted by the JPO.

In addition, the JPO uses Similar Group Codes when assessing the similarity of goods and services.

Careful review of the designated goods and services before designating Japan can help reduce the risk of a provisional refusal.