Unfortunately, trademark rights acquired in Japan are recognized based on Japanese trademark law.As a general rule, it is not recognized as a right in foreign countries.
For example, even if a trademark that is the same as or very similar to a registered trademark in Japan is used overseas, you may not be able to take countermeasures. Therefore, those who think that their business development will involve some sort of relationship with a foreign country should at least consider whether it is necessary to obtain trademark rights in the relevant country as well.
Of course, when providing products or services in a foreign country, even if the main market is domestic, if the product is manufactured in a foreign country, it may be necessary to obtain trademark rights in that country.
On this page, we will briefly explain how to obtain trademark rights in a foreign country to help you consider filing a foreign application.
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How to obtain trademark rights overseas
There are two main ways to obtain trademark rights in a foreign country: "direct application" and "international registration application based on the Madrid Protocol (hereinafter referred to as "Madpro application").
direct application
You apply directly to the designated government office of the foreign country where you wish to obtain trademark rights. Direct application can be said to be the most basic method, and can be filed as long as the country in which you wish to obtain trademark rights has a trademark application system.
This method requires you to proceed according to the laws of each country. Therefore, those who wish to obtain trademark rights in multiple countries will need to complete the same procedures as the number of target countries.
It can be quite difficult when there are a large number of target countries, and not only do you have to understand the rules for each country you are applying to, but you usually have to be a qualified person living in that country to apply to a foreign country. Since you will need an agent, you will also need to budget for the agent's fees.
madpro application
Simply put, MadPro application is a system that allows you to apply to many countries at the same time with one procedure. In many cases, it is easier to apply and can also lower filing costs than direct applications, which require filing for each country in which you are applying.
However, when applying for MadoPro, please keep in mind the following points.
① Applications cannot be made to countries and regions other than MadPro member countries.
② Basic application or basic registration in Japan is required, and the trademarks must be the same
③If the basic application or basic registration is canceled or invalidated within 5 years from the date of international registration, both will collapse.
④If the number of countries to which you apply is small, it may cost the same or more than direct application.
Now, I will explain the procedure for applying for MadoPro in a step-by-step manner.
(1) Application
The application procedure involves submitting the necessary documents to the Japan Patent Office, which is the government office of the country of origin.
The Japan Patent Office conducts a formality examination of the application documents, and if there are no problems, sends them to the International Bureau of the World Intellectual Property Organization (WIPO) (the organization that manages MadPro applications).
(2) International registration
The International Bureau receives application documents from the Japan Patent Office, examines the validity of the goods and services designated as objects of protection, and if there are no problems, registers them in the International Register (a management register containing all information regarding international registrations). ). The international registration certificate will then be sent to the applicant (or application agent).
Please note that at this point, each country'sNo trademark rights have arisen.
(3) Examination in each country
For internationally registered trademarks, the International Bureau sends a "designation notification" to the designated country (the country in which the applicant wishes to obtain trademark rights in the application documents). Each country that receives a notification of designation issues a public notice for review and objections by third parties.
Furthermore, it is also possible to expand the scope of application to countries that were not initially designated as application countries through "subsequent designation."
(4) Rights acquisition in each country
If you do not receive a "Notice of Provisional Refusal" within one year (1 months depending on the designated country) from the date on which the notification of designation is sent, in principle, a notice of approval of protection will be issued and you will be able to acquire trademark rights in each country. .
※important point※
If there is a problem with (1) and (2) above, it can be resolved by responding to the Japan Patent Office, but in response to notifications of provisional refusal from each country, it is necessary to respond individually to the designated office of each country. It will be.
In that case, as a general rule, you will need to go through the procedures through a local representative in each country.
Claiming priority under the Paris Convention
Regardless of whether it is a direct application or a MadPro application, as a general rule, if the country in which you wish to register your trademark is a member of the Paris Convention, you can claim "priority".
It is believed that there are many cases in which a trademark registration application is first filed in Japan, the home country, and then the application is considered and implemented in a foreign country. In this case, between the time the application is filed in Japan and the time it is filed in a foreign country, a third party may file an application for the same or very similar trademark in that foreign country.
With the exception of some countries, whether trademark registration is approved is basically on a first-come, first-served basis (first-to-file system). There is a possibility that it will become. A system called priority claims attempts to eliminate this disadvantage.
In the country where priority is claimed, the application will be treated in the same way as if the application had been filed in that foreign country on the same day as the application in Japan.
For example, if the application is filed in Japan on April 4st and the application in Country A is filed on June 1st, even if a third party files an application for the same trademark in Country A on May 6st, the priority right will not be granted. If so, the third party's application will not be considered a first application and will not be treated unfavorably in country A.
However, priority claims are only allowed “within six months” from the filing date of the application in Japan.
in conclusion
Above, I have explained the outline of foreign applications. There are other types of foreign applications, such as those based on bilateral treaties and those specific to the European Union (EU), but the above two types are the basic ones.
If you would like to know more about the foreign application system, please feel free to contact our office.