Is it necessary to file a trademark application in a foreign country? How to file an application?

Do I need to apply for a trademark in a foreign country?

We have decided to export our products overseas, but since we have trademark rights in Japan, can we use the trademark overseas as is?

It is risky to use intellectual property that has been granted rights in Japan as it is in other countries. Even if you have obtained trademark rights in Japan, those rights are not recognized in foreign countries in principle.

Because trademarks and other intellectual property are rights under the laws of each country, in principle, the validity of such rights is limited to the country in which they are registered.

This page introduces the necessity of applying for trademarks in foreign countries and the application procedure.

Necessity of filing a trademark application in a foreign country

Trademark rights acquired in Japan are only effective in Japan. Therefore, even if a trademark is registered in Japan, it may be infringed by others in other countries. Conversely, exporting a company’s product to a foreign country with a trademark registered in Japan may be considered an infringement of the trademark rights of others in that country.
When using a trademark in a foreign country, you should obtain trademark rights in that country as well.

Importance of Trademark Searches

It is also useful to conduct a trademark search before filing a trademark application in a foreign country.
In addition to knowing the likelihood of registration in that country, it can also prevent infringement of the same trademark or a third party’s trademark that is very similar.
In addition, a search can provide useful information about trends in practice in a country, which may be useful for future applications in that country, and can allow you to consider measures to avoid trademark infringement in advance.

Prior research is important when applying for a trademark in a foreign country, as it is both costly and time-consuming. It is more economical and efficient to avoid having your trademark application rejected because of a previously registered trademark.

Who should consider filing a foreign trademark application?

Consider the following criteria for how to select the countries in which you should file your application.

• The company exports or sells its products to foreign countries.

If the trademark is owned by someone else in that country, you may infringe the trademark rights of others and may be subject to injunction and damages.
To secure exports, it is necessary to file a trademark application in that country.

• The company has its own sales office, local subsidiary, etc. in a foreign country.

Since the company’s trademark is already in use, infringement of someone else’s trademark rights would be a major business problem.

• There is a country where the export volume is expected to increase in the future.

This is to prevent problems that may arise in the future.

If you provide goods or services in a foreign country, or if you manufacture in a foreign country even if your main market is in Japan, you may need to obtain trademark rights in that country.
Both companies and individuals should at least consider whether or not it is necessary to obtain trademark rights in countries with which they will have some connection when doing business in foreign countries.

Then we should at least consider filing a trademark application in the country to which we are exporting. But how do we file?
Sounds like a lot of work since there are so many exporting countries.

There are two main ways to obtain trademark rights in a foreign country. Each has its own advantages, so you can take advantage of the application method that best suits your needs!

“Direct Filing” and “International Trademark Application under the Madrid Protocol”

Direct Filing (Country Specific Filing)

This is to file an individual application in the foreign country in which you wish to obtain trademark rights.

Filing an International Trademark Application under the Madrid Protocol (application for international registration under the Protocol to the Madrid Agreement)

Simply put, it is a system that allows simultaneous applications to be filed in many countries at once.

The application documents are submitted to the Japan Patent Office, and if there are no problems with the formal examination, the application is sent to the International Bureau of the World Intellectual Property Organization (WIPO) (the organization that manages international trademark applications).
Applications may be filed in any country that is a signatory to the Madrid Protocol, an international treaty that establishes a system for the international registration of trademarks (marks), and the applicant is free to specify the desired country.

Reference: JPO [International Applications for Trademarks] List of Contracting Countries (in Japanese)

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

Advantages and disadvantages of each

Direct filing

• Procedures are handled through a local patent attorney, so systems and laws in each country can be appropriately handled.
• Cost savings is possible when the number of target countries is small (one or two countries).
• Applications can be filed in countries that are not members of the Madrid Protocol.
• Different forms and scopes of rights can be specified for each filing country.
• If the number of target countries is large, the cost of a local patent attorney will be high.
• Translation costs into each language may be incurred.
• Each country has to manage its trademarks.

Filing an International Trademark Application under the Madrid Protocol

• If the number of target countries is large, application costs can be reduced compared to the direct filing.
• Simplified procedure, as applications can be filed simultaneously in several foreign countries in a single procedure (one document).
• The scope of coverage can be extended to countries that were not initially designated as “subsequent designation”.
• Centralized management in the International Registry allows for renewal, name and address changes, etc., for all designated countries at once.
• Cannot file an application in countries and regions other than Madrid Protocol member countries.
• Basic application or basic registration in Japan is required, and the trademark must be the same.
• The applicant cannot file an application beyond the scope of the classifications and goods/services designated in the basic application or basic registration in Japan.
• If the basic application or the basic registration is canceled or invalidated within five years of the international registration date, the international registration will be canceled and protection in each designated country will also be lost.
• If the number of countries to which the application is filed is small, the cost may be the same as or greater than that of a direct filing.
• If a reason for refusal is notified at the examination in each country, it is necessary to go through the local patent attorney in each country.

Claiming priority under the Paris Convention

Regardless of whether a direct filing or an International Trademark Application under the Madrid Protocol is filed, as a general rule, a “priority right” can be claimed if the country in which the applicant wishes to register the trademark is a member of the Paris Convention.

In countries where a priority right is claimed and filed “within 6 months” from the filing date of the Japanese application, the applicant is entitled to the same treatment as if the application had been filed on the same date as the Japanese trademark.
For example, if the application in Japan is filed on March 1 and the application in Country A is filed on June 1, if a priority right is claimed, the application in Country A will be treated as “filed on March 1 (filing date in Japan)”. In the unlikely event that a third party files an identical trademark application in Country A on May 1, the third party’s application will be a later application and will not be treated adversely.

Well, since we have trademark rights in Japan, and since we export to so many countries, it looks like a good idea to file a Madrid Protocol application this time around! First, let’s see if the exporting country is a member of the Madrid Protocol!

If you do business in a foreign country, consider filing a foreign trademark application!

In recent years, it has become inseparable from overseas relations not only in product sales but also in the manufacturing process.
In order to strengthen your brand and prevent problems, please consider filing a foreign trademark application if you have any kind of relationship with a foreign country.

Our firm is also good at foreign trademark applications. We have extensive experience in filing applications in various foreign countries.
If you are filing an application in a foreign country for the first time, or if you are not sure which route to take, please feel free to contact us with a chat.
Our patent attorneys specializing in trademarks will be happy to answer your questions.

Information on each country can also be found on our site map.