madpro application

MADOPRO is an international treaty that stipulates the international registration of trademarks, officially known as the Madrid Protocol, and Japan joined this treaty on December 1999, 12.

By submitting a single application document prepared in a designated language to the World Intellectual Property Organization (WIPO) via the patent office of your country, you can obtain the same effect as filing an application in each designated country at once. This is a possible procedure.

As of March 2023, there are 3 member countries covering 130 countries, including the United States, the United Kingdom, South Korea, China, France, and Russia. On the other hand, countries such as Taiwan and Hong Kong are not members at the same time, so if you wish to obtain trademark rights in these countries, you must apply directly.

Procedure flow

Below is a flowchart for direct filing and Madpro filing (protocol filing).

In a direct application, the application is filed directly to the patent office of that country through an agent in the country of application, whereas in the case of a MadPro application, the application is filed directly to the patent office of the country of application without the need for an agent in the country of application. The difference is that there are

After filing a MadPro application, it will be examined in the order of ``home country patent office → WIPO'', and if the formal requirements are met, it will be internationally registered. Then, the substantive requirements will be examined in each designated country based on the standards of each country, and if there are no problems, the trademark will be registered in each country.

It is important to note that even if an international registration is made, that alone does not mean that the trademark rights of each country can be obtained.

The examination before international registration is only a formal examination, so in order to obtain trademark rights in each country, substantive requirements must be met individually based on the examination standards of each country. It doesn't have to be.

≪Reference: Comparison with direct application≫

 

Basic registration or basic application in Japan

In order to file a MadoPro application, a domestic registered trademark or domestic trademark application is required as the basis.

Application conditions

①Need for basic application/basic registration

The trademark you wish to register internationally must be applied for or registered at the patent office of your country. This advance application and registration is called a basic application or basic registration.

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②Identity of trademark

The trademark in the MadPro application must be the same as the basic application/basic registration. This identity is strictly required. For example, even if a trademark with Japanese and its English expressions arranged in two columns is registered as a domestic trademark in Japan, only the English part can be extracted and the mark written in English only can be created. cannot be considered as a basic registration for an international application consisting of

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③ Identity of designated goods and services

The range of goods and services specified in the MadPro application must be within the range of goods and services specified in the basic application/basic registration (including exact matches).

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④Identity of applicant

At the time of filing a MadPro application, the applicant name must be exactly the same as the applicant name for the basic application/basic registration. Please note that it is possible to change the application name after filing a MadoPro application, and there is no problem even if the names are no longer the same as a result.

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⑤ Applicant status restrictions

The applicant must be a national or a foreigner who has an address or residence (or a business office in the case of a corporation) in the country, and if there are two or more applicants, this condition applies to all of them. It needs to be fulfilled.

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Required documents

i) Application form

Submit an official form called the International Registration Request (MM2).

[Patent Office: Application form for international trademark registration application according to the Madrid Protocol]

https://www.jpo.go.jp/system/trademark/madrid/yoshiki/gansho.html

*[Reference] Japan Patent Office: Collection of procedure forms for international registration applications (pdf file)

https://www.jpo.go.jp/system/trademark/madrid/tetuzuki/document/madopro-jitsumu-text/madopro-jitsumu-mm2.pdf

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ii) Document with fee attached to the office of origin

Separately from the application, submit a patent stamp (9000 yen) pasted on a document with the submission date, subject, etc.

*If you designate the United States (US), you must submit a Declaration of Intent to Use the Mark (MM18) with your application at the time of application.

*Official fees for international registration applications are paid directly to WIPO.

Madpro route cost

○The Madpro route requires WIPO official fees, Japan Patent Office stamp fees, and our office fees.

(However, if, for example, an office action (notice of provisional refusal, etc.) is issued, a local agent will need to carry out the procedures at the patent office of each country, so local agent fees may be incurred. )

Regarding international trademark application fees:https://www.jpo.go.jp/system/trademark/madrid/tesuryo/madopro_syutugan_fee.html

*Please feel free to contact us regarding our costs.

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ⅲ) Language

MadPro has three languages ​​(English, French, and Spanish), but since the Japan Patent Office is the home office, only English can be used. Japanese is not available.

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Formality examination at the office of origin (Japan Patent Office)

As a general rule, the international registration date is the date on which the application is received by the Japan Patent Office, which is the country's office of origin, and this corresponds to the "filing date" for applications in Japan.

The Japan Patent Office will examine whether the following requirements are met.

i) Identity of registered trademark and registered holder (or trademark in application and applicant)
ii) Identity of designated goods and services
iii) Identity of marks (*Strictly required, only differences in size at the same scale are allowed.)

If these requirements are not met or there are deficiencies in the information, the office of origin will notify the applicant of the incompleteness, and the applicant will be able to take corrective action within 14 days of the notification.

International registration/international publication

WIPO (International Bureau) will conduct a formal examination of the documents, etc., and if no defects are found, an international registration number will be assigned and the document will be registered in the International Register.

After that, the fact that it has been internationally registered will be announced in the WIPO Bulletin on International Marks.

Notification of area designation to designated country patent office

Once the international registration is completed, you will be notified that you have been designated as a country seeking protection (designated country), and your product will be treated in the same way as if you had applied to each country individually.

Please note that even if a trademark has been internationally registered, it does not yet have rights in the designated country and will be examined in accordance with local laws.

Substantive examination in each designated country

Each designated country designated by WIPO examines trademarks according to its own laws and regulations.

If grounds for refusal are found, the patent office of each designated country shall:E.It is stipulated that a notification of provisional refusal must be submitted within one year (or 18 months) from the date of notification.

Therefore, if there is no notification within that period, if a statement of approval of protection is made within that period, or if the reasons for refusal mentioned above are resolved, protection will be granted and rights will arise.

The duration of trademark rights based on international registration is:C.10 years from the "International Registration Date".

How long does it take to register?

If you use the MadoPro application, you can predict how long it will take to register. It is stipulated that the office of the designated country for the MadoPro application must, in principle, notify the reasons for refusal within 12 months, or at the latest 18 months, from the notification of WIPO to the office of the designated country. Only member countries that have declared their intention to notify will have the period changed to 18 months; for other countries, the period will be changed to the standard ``within 18 months''). Therefore, within 12 months at the most, you will know whether your application will be rejected or registered. In addition, with MadoPro applications, unless there is a need for office action, procedures can proceed without the intervention of a local agent, reducing the amount of time spent contacting local authorities.

Madpro member countries and 18-month declaration correspondence table (as of May 2022)

Note: Japan does not recognize North Korea as a country.

Trademark renewal/management

Since trademarks are managed centrally in the international registry by WIPO, trademark rights for all designated countries can be renewed at once, which reduces the burden of rights management.

 

Advantages and disadvantages

Benefit

①Cost savings

In general, there are cost savings with MadPro filing compared to direct filing. If you apply directly, you will need to pay a local agent fee in each country, as well as translation costs into the language of each country.

On the other hand, in the case of a MadPro application, it is possible to proceed without appointing a local agent, and the languages ​​are specified as "English, French, and Spanish," so translation fees can be reduced. Masu.

　*The Japan Patent Office only accepts applications in English.
　*As a result of substantive examination in each country after international registration, reasons for refusal are found and only if you respond to them will you incur costs for appointing a local representative in that country and translation fees.

②Simplification of procedures and management

Using MadPro Application makes procedures and management simple. Applications can be filed in multiple countries at the same time using the patent office in your home country, and applications such as renewing the term of trademark rights, transferring ownership, and changing names can be completed in a single procedure with WIPO. It will be possible.

③ Rapid review

Compared to direct applications, MadPro applications can shorten the examination period. When using a MadPro application, the examination period for each country is limited to one year (or 18 months) (Article 5 of the Madrid Protocol).

Due to this restriction, you will be able to know the outcome of your application after one and a half years at the latest. On the other hand, direct applications are not subject to this restriction, so depending on the country, it may take longer than 18 months for the examination results to be notified.

Countries that were not designated at the time of the original application or new member states can be added as designated countries through subsequent designation procedures. This makes it possible to expand the scope of protection after the fact. In addition, contrary to extending protection, unnecessary rights maintenance costs can be saved by waiving rights only for designated countries that no longer require protection.

Demerit

①Identicality with basic application/basic registration is required

It is required that the MadPro application and the basic application/basic registration be identical.

②Danger of central attack

A central attack is when a basic application or basic registration in one's own country lapses due to refusal, abandonment, invalidation, cancellation, etc. within five years from the date of international registration, and the scope of rights of the corresponding international registration (designated goods, (Article 6 of the Madrid Protocol)

If the international registration loses its validity due to a central attack after filing for MadoPro, there is a remedy to transfer the application to each country, but the time and effort required for application, renewal, transfer, etc. will be enormous.

Therefore, when actually filing a MadoPro application, it is necessary to take action to reduce the risk of this central attack as much as possible (for example, when filing a MadoPro application based on a basic registration, rather than filing a MadoPro application based on a basic application). (the risk of a central attack is lower).

③It is not possible to change the classification after filing.

Mamado Pro applications do not allow changes to the designated category after filing. Therefore, if a product or service is classified in a different country than in a foreign country, a decision of refusal due to the difference in classification will be made in the substantive examination in the foreign country.

In the case of a direct application, it is allowed to make amendments to the correct classification, so you can respond to this decision of refusal, but in the case of a MadPro application, you cannot change the classification, so you will not be able to register.

Therefore, before filing an application for MadoPro, it is very important to research the domestic classification of the goods and services you want to cover with the trademark, as well as the foreign classification.

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