How to Register Trademark in Foreign Country -Application for International Trademark Registration Explained!

How do you obtain trademark rights in a foreign country?

I’m thinking of getting trademark rights in foreign countries. It seems to take a lot of time and effort to file and register in each country where I want to get the rights. Do you have any good information on how to make it easier?

In addition to filing an application for each of the countries in which you wish to obtain rights, you can also file a batch application using “International Application under the Protocol of the Madrid Agreement (Madrid Protocol Application)” system. There are a few requirements and points to note in order to use the system. If the requirements are met, the system is recommended as it simplifies the management of procedures and trademark renewals.

Madrid…I’d love to hear more about the long-named system and what I should be aware of! Let me know!

This article provides a brief overview of the system of “Application for International Registration under the Madrid Protocol (Madrid Protocol Application).

What is International Trademark Registration System?

Madrid Protocol Application is an application for international registration of a trademark using the Madrid Protocol, an international treaty for protection of trademarks.

This includes filing documents for international registration with the International Bureau of the World Intellectual Property Organization (WIPO) through the Japanese Patent Office with designating countries in which you wish to seek protection of a trademark.

When registering a trademark in a foreign country, it is usually necessary to file an application separately in each of the countries in which you wish to acquire rights. On the other hand, in the Madrid Protocol Application system, which will be explained below, it is possible to file applications in multiple countries at once by filing an application with the Japan Patent Office.

The following explains the advantages and disadvantages of filing a direct application in each country and Madrid Protocol applicationm, for your reference.

Countries and regions where Madrid Protocol Application is available

As of July 2022, the Madrid Protocol application is available in more than 110 countries and regions. The number of signatory countries is on the rise, with the United States, the EU, China, as well as countries in Southeast Asia and Latin America also signatory countries. For more information, please visit the JPO website below.

・Reference：JPO 【International Trademark Application】List of signatory countries ( available in Japanese)
https://www.jpo.go.jp/system/trademark/madrid/madopro_kamei.html

Requirements for Madrid Protocol Application

In order to file a Madrid Protocol application with Japan as the Office of Origin, the following requirements (1) to (6) must be met.

Basic Trademark

(1) The trademark that is the basis of the Madrid Protocol application must be filed or registered with the Japan Patent Office.
(2) The trademarks in the Madrid Protocol application and in the basic application are identical.
(3) The goods or services designated in the Madrid Protocol application are the same as or within the scope of the goods or services designated in the basic application or registration.
(4) The applicant of the Madrid Protocol application is the same as the applicant of the basic application/registration.

Applicant Eligibility

(5) A person who is eligible to file a Madrid Protocol application is a Japanese citizen or a foreigner who has a domicile or residence (or business office in the case of a corporation) in Japan.
(6) If there are two or more applicants, all applicants must meet the requirements of (5).

Notes

• Since the procedures are centralized, it is difficult to file an application according to the circumstances of each country, and an application may be subject to reasons for refusal in the examination of each country.
• In a Madrid Protocol application, change of class of the designated goods (services) is not allowed after the application is filed.
• Central attack (*) may cause the registration of each country to revoke.

*Central attack refers to the circumstances that if the basic application or the basic registration of a Madrid Protocol application is refused or becomes invalid, etc. within a prescribed period (within 5 years from the date of international registration), the rights of each country in the Madrid Protocol application will be revoked. In such a case, a remedy is provided whereby the application can be re-filed as a national application in each country within the same scope.

I see! In order to file a Madrid Protocol application, you first need to file a trademark application and register your trademark in Japan.

Summary

We hope that you have gotten a general idea of the Madrid Protocol application process.
In order to file a Madrid Protocol application, the application must be based on an application for trademark registration or a Japanese registered trademark in the Japan Patent Office.

We offer a unique service called “Amazing DX” which allows you to complete trademark registration procedures online (on our website). You can communicate with us through chat rooms, so please feel free to make use of this service. Amazing DX also provides various contents related to trademarks.

Our patent attorneys handle all interactions from filing to registration in Japan, so you can enjoy a speedy procedure with a low price while the quality of our service being ensured. Please start by registering an account.

Our staff with extensive experience in foreign-related services will continue to handle an Madrid Protocol application procedures and subsequent procedures in each country, so you can rely on us.

If you wish to file a foreign application, including a Madrid Protocol application, please refer to AmazingDX Foreign Trademark Application.