International Reg. Application
By filing an international registration application, a trademark can be registered in several foreign countries through a simple procedure.
As of March 2016, a trademark can be registered in up to 97 countries by filing an international registration application.
[Procedural flow up to registration]
* To file an international registration application, the applicant must have a trademark application (“basic application”) or a trademark registration (“basic registration”) in a country.
* The trademark specified in the international registration application must be "identical" to the trademark specified in the basic application or the basic registration (“basic trademark”). The trademark specified in the international registration application cannot be merely "similar" to the basic trademark.
* The designated goods or services of the international registration application must have the same scope or a narrower scope than the designated goods and services of the basic application or registration.
For example, if the basic application has "automobiles, bags, and chairs" as the designated products, the international registration application may designate "bags and chairs" (narrower scope) but cannot designate "automobiles and calculators," as this adds a classification that is not in the basic application.
The designated goods or services can be changed for each country in which registration is sought.
* The applicant can freely select which countries to seek registration in.
* The application documents are written in English. There is no need to translate the documents into the languages of the countries in which registration is being sought.
* Fees are paid to the Office of Origin and the International Bureau.
Fees for the Office of Origin depend on the rules of each country.
There are 4 types of fees paid to the International Bureau, which include basic fees, fees for additional designated countries, fees for additional classifications, and individual fees. The basic fees are necessary, but the other types of fees may be unnecessary, depending on the content of the international registration application and the designated countries.
* Priority can be claimed under the Paris Convention within 6 months of the basic application being filed.
Claiming priority under the Paris Convention is beneficial because the application for which priority is claimed is treated as having the same filing date as the basic application.
B. Office Of Origin
The Office of Origin is an office of a contracting country with which a basic application was filed or by which a basic registration was granted.
* The "international registration date" is determined to be the date on which the Office of Origin receives the international registration application.
Please note that this is the date on which the Office of Origin actually receives the application documents, not the date on which the application documents are mailed.
C. International Bureau
* The International Bureau performs formal examinations of international registration applications, and records trademarks that pass the examination in the international trademark register.
This international registration does not mean that the trademark is protected in the designated countries. It merely means that the content of the trademark being applied for is recorded in the international trademark register.
* Trademarks that receive international registration are published at the International Bureau.
* The International Bureau notifies the appropriate offices in each country where the trademark registration is being sought about the international registration, and the Office of Origin and the applicant are both informed of this notification.
D. The offices in designated countries
* The appropriate office in each country designated by the applicant makes their own examination as to whether the trademark registration will be accepted.
* If the appropriate office in a designated country does not agree to protect the trademark of the international registration application, this office will issue a "Notification of Provisional Refusal," which states that the trademark of the international registration application cannot be protected, to the applicant within 18 months from when notification was provided by the International Bureau.
* If the appropriate office of a designated country does not issue a "Notification of Provisional Refusal" within the "Notification of Provisional Refusal" period (12 or 18 months), the result is the same as if the trademark had been registered in the designated country since the date of the international registration.
Therefore, if the registration in the designated country creates a trademark right, this trademark right is protected from the date of the international registration.
* When attempting to counter a "Notification of Provisional Refusal" with a Written Opinion or Amendment, it is usually necessary to use a local agent, which incurs additional fees.
If no response is made to the "Notification of Provisional Refusal" the trademark will not be protected in the designated country, and this is equivalent to a "Decision of Rejection."
[Renewal of trademark rights (period of validity)]
A trademark is valid for 10 years from the international registration date.
This 10-year period can be renewed as many times as the applicant desires, and can be renewed in every designated country at once.
It should be noted that a trademark right is created in each country that agreed to protect the trademark.
If the basic application is rejected or the basic registration is terminated within 5 years of the international registration date, the international registration is dissolved and the trademark is no longer protected in the designated countries.
In this case, the international registration can be switched to individual applications in each of the countries, but this requires additional fees for each of the local agents.
Even if the basic registration is terminated, the protection of the trademark in the designated countries will remain as long as it has been more than 5 years since the international registration date.
Designated countries can be added even after international registration is granted for an international registration application.
The addition of designated countries is effective when it is necessary to obtain the trademark right in a country where you originally thought the trademark would not be used or in a country that has just recently become a signatory of the Madrid Protocol.
[Advice for filing international registration applications]
When filing an international registration application, we recommend carefully considering the advantages and disadvantages discussed below.
We recommend giving special consideration to the risks incurred by the "central attack" described above.
When an international registration application is filed based on an application, it is possible that the basic application will be rejected.
If this happens, while the examination process and arguments are ongoing, it is a good idea, if possible, to wait until nearly 6 months have passed from the date of the basic application, during which time priority can be claimed, and to then file the international registration application after the "Decision of Registration" (a judgment from the Examiner that the trademark can be registered) is received.
As long as the applicant does not receive a response that the trademark cannot be registered in the designated countries (which are selected by the applicant), there is no need to use a local agent. Therefore, this is less expensive than filing directly in each country.
Simpler application procedure
Applications can be filed simultaneously in each member country selected by the applicant by filing just one application with the Office of Origin.
The application can be filed in English, regardless of which countries are selected.
The fees paid to the Office of Origin are less than the fees that would be paid to local agents in every selected country when filing directly.
If an Examiner in a designated country rejects the trademark registration application, the examiner must issue this rejection within 18 months of receiving notification of the application from the International Bureau. Therefore, a judgment is quickly made as to whether the trademark right can be obtained.
Simpler rights management (unified management)
After a trademark is registered, procedures such as renewal or change of name can be handled for every country at once through the Office of Origin
The international registration can be revoked and protection can be lost in every designated country if, within 5 years of the international registration, the basic application is rejected or the basic registration is terminated.
In such a case, the international registration can be converted to several individual applications for each country, but this requires fees for the local agent in each country.
The international application must be the same as the basic application or the basic registration.
The designated goods or services must also be the same as, or of a narrower scope than, the designated goods or services of the basic application or registration.
After international registration of the trademark, similar trademarks might be mistakenly registered. In order to prevent this, you should file an application for trademark registration in China or keep watching for similar trademarks to be registered. In the event of a mis-registration, you should file an opposition to such mis-registration.
Countries adhering to the Madrid Protocol (Includes 97 countries as of March 2016)
Most advanced countries and countries having a large number of applications have joined the Madrid Protocol. Countries that are not members of the Madrid Protocol include Canada, Taiwan, Hong Kong, Macao, Thailand, Malaysia, Indonesia, Brazil, Argentina, etc.