Welcome Madrid Cases!
Because Japan is a member of the Madrid Protocol, foreign applicants can file applications in Japan through the International Trademark Registration system.
Although Madrid cases do not need to have local agents in each of the designated countries at the time of filing, if Japan is designated and the Japan Patent Office (JPO) issues a Notice of Provisional Refusal, the applicant has to appoint a local agent promptly in order to reply to the JPO.
Toyosaki & Associates provides expert support to applicants who need a local agent to assist them in overcoming an office action. Please do not hesitate to contact us. We will promptly provide you with our professional comments on countermeasures to overcome the notice.
Tips for filing an International Registration designating Japan.
1. Registrable Trademarks:
Under the current Japanese Trademark law, Word Trademarks, Figure Trademarks, Symbols, Three-dimensional Trademarks, Trademark in combination with the above and color can be registered. Sound marks, smells, taste, or partial dev ice marks are still not accepted (as of July, 2010).
2. Description of designated goods/services:
- Nice Class Headings are not accepted.
The JPO does not accept Nice Class Headings as descriptions of designated goods and/or services. If you designate goods and services in accordance with the description of nice class heading, you will be requested to amend the description of goods and services so as to meet Japanese practice.
- "Supplements" fall under class 29 or 30 in Japan.
Although Japan has joined the Nice treaty and has adopted its International Classification, Japan treats some goods differently than they are treated is some other countries. Since supplements are deemed to be a kind of food in Japan, they are placed in c lass 29 or class 30 NOT class 5. If you wish to get a trademark right for a "supplement" in Japan, we recommend filing a local trademark application.
3. Procedures in Japan
- "Division of an application" and "conversion of an application" are not accepted.
Although Japanese trademark law accepts the "division of an application" or "conversion of an application" for local applications, these procedures are not allowed for Inter national Trademark registrations.
- Term for amendment is limited.
Any amendment to the designated goods or designated services stated in the international application for trademark registration may be made only within the time limit for replying to the Notice of Provisional Refusal which is normally three months from the issue date of the Notice. (A one month extension is available.)
- "Letters of Consent" are not accepted in Japan
Consequently, if the JPO determines that your trademark is similar a the prior trademark registration and you are able to get the owner of the prior registration to consent to the registration of your trademark, a "Letter of Consent" will not enable you to overcome the refusal.
- Too many designating goods and service may cause receiving a notice of refusal.
If you designated too many goods and/or services in any class, the JPO will request the applicant to file evidence showing bona-fide intent to do the business concerning all the designated goods or services. Since the underlying purpose of a trademark is for use in the course if trade, the JPO has taken the stance that there is a justifiable doubt as to whether the applicant is conducting, or is planning to start, business connected with the designated services if a large number of goods and/or services are specified.
- Second payment of Individual fee is needed for registration.
If an examiner's decision or a trial decision is rendered to the effect that a trademark pertaining to an international application for trademark registration is to be registered, the JPO notifies the International Bureau of the time limit for the payment of the individual fee pertaining to the application. The applicant has to pay this Second Individual Fee directly to the International Bureau.