How to use the Madrid Japan · countries simultaneously by a simple procedure *JPO issues...
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JOINT MEETING AIPLA/JTA April 8, 2013 How to use the Madrid Protocol effectively in Japan Chiaki Kawai Kawai & Associates Japan Trademark Association
Transcript of How to use the Madrid Japan · countries simultaneously by a simple procedure *JPO issues...
JOINT MEETING
AIPLA/JTA April 8, 2013
How to use the Madrid Protocol effectively in
Japan
Chiaki Kawai Kawai & Associates
Japan Trademark Association
Introduction
0
20
40
60
80
100
1996 1999 2002 2005 2008 2011
12
88
JP
US
Members of the Madrid Protocol by year
Contents
1. The status of Madrid System utilization
2. Tips for designating Japan under the Madrid Protocol
3. Advantages and disadvantages of using the Madrid Protocol in Japan
The current status of Madrid System utilization
559,826 active IRs as of the end of 2012
5 top offices of origin
EU, US, Germany, France and Switzerland
Japan is the 7th
Statistic source: WIPO website
Filing Trends (Madrid Filings of JP & US Origin)
MP filings of US origin MP filings of JP origin
0
2000
4000
6000
8000
10000
12000
14000
16000
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1000
2000
3000
4000
5000
6000
2007 2008 2009 2010 2011 2012
Applications of international registrations
Designations in international registrations Statistic source: WIPO Website
0
2000
4000
6000
8000
10000
12000
14000
16000
0
1000
2000
3000
4000
5000
6000
2007 2008 2009 2010 2011 2012
Filing Trends (Madrid Filings designating US & JP)
11067
15000
0
2000
4000
6000
8000
10000
12000
14000
16000
2007 2008 2009 2010 2011 2012
JP
US
Statistic source: WIPO Website
Europe 45%
US 31%
CN 7%
KR 6%
Other Asia 6%
Mid- South America
Africa
Others
Filing Trends with the JPO including international filings Applications to
JPO
Breakdown of Applications filed by non-residents to JPO by
country in 2011
Source: JPO Report
0
20000
40000
60000
80000
100000
120000
140000
160000
2007 2008 2009 2010 2011
Resident
Non-resident
Filing Trends of the top 7 offices of origin designating JP & Ratio of MF/Int’l
F to JP
0%
10%
20%
30%
40%
50%
60%
70%
80%
90%
100%
2007 2008 2009 2010 2011
CN
KR
EU
US
Source: JPO Report
0
500
1000
1500
2000
2500
2007 2008 2009 2010 2011
US
EU
DE
FR
CH
CN
KR
MF designating JP by office of origin
Ratio of MF/Int’l F to JP
Filing trends from Japan to other countries
22886
5054
2915
2168 0
5000
10000
15000
20000
25000
2007 2008 2009 2010 2011
CN
US
KR
OHIM
Source: JPO report
Top 5 countries designated for filings of Japanese origin
Ratio of MF to international filings
from Japan
Source: JPO report
0
200
400
600
800
1000
1200
1400
2007 2008 2009 2010 2011
CN
KR
US
OHIM
SG
0%
10%
20%
30%
40%
50%
60%
70%
80%
90%
100%
2007 2008 2009 2010 2011
CN
KR
OHIM
US
Tips to keep in mind when designating Japan under the Madrid
Protocol 1. The second half of the
individual fee payable to WIPO
2. Amendment Period to JPO is limited.
3. The system for designating goods/services
Tips for JP designation of MP Designation of goods/services
- Possible Grounds for Refusal
① A vague/broad description
② Too broad of a specification in view of use or intention to use the mark
③ Conflict with an earlier mark
* Examiner’s suggestion given in notification is only one example, and you do not necessarily have to follow it.
Tips for JP designation of MP ①
① Too vague/broad a description
* No Class headings allowed in principle
Tips for JP designation of MP ①
① Too vague/broad a description
Tips for JP designation of MP ①
① Vague/broad description
Tips for JP designation of MP ②
②Too broad a specification in view of use or intension of use of the mark
・ 70% of registered trademarks are more or less non-used. Because of this from 2007, JPO strengthened examination on use or intent to use TM
1)Goods/Services except for Retail services
Up to 7 sub-classes in a class
2) Retail services
Up to 1 sub-class in class 35
What is sub-class?
Under JPO’s practice, each class of International Classification consist of sub-classes which are allocated in the same similarity group code. When adopting IC in 1992, JPO decided to maintain similar group codes.
http://www.jpo.go.jp/cgi/link.cgi?url=/shiryou/kijun/kijun2/ruiji_kijun10-2013_eng.htm
Guideline of Similar G/S (10th Edition of Nice Classification)
Similarity Group Code – Class 33
1. 28A01 Japanese liquors
2. 28A02 Western liquors and wines
3. 28A03 Chinese liquors
4. 28A04 Flavored tonic liquors
Dissimilar Similar
Retail services – 21 sub-classes
Goods Cross search
Dissimilar
Similar
Dissimilar
35K01 35K02
35K03
17A01
Tips for JP designation of MP ②
Measures to overcome such official objection
File amendment – Limiting G/S to those falling in less than 7 or 1 subclass(es)
Submit Proof of use
Submit Declaration and Scheme for planning use of the mark for the next 3-4 years
Advantages and Disadvantages of using Madrid Protocol in Japan
When to use MP in Japan? １）When Appln needs to be filed for a large number of
countries simultaneously by a simple procedure *JPO issues Registration Certificate.
２）When trademark portfolio is to be managed by one registration number for a large number of countries – Subsequent designation; Change of name, address or ownership, renewal is accomplished with a single procedure.
Time ? Examination period is getting shorter, so No
difference between national filing and MF Cost ? Because of individual fee JP adopts, No
difference between national filing and MF for official fee.
Advantages and Disadvantages of using the Madrid Protocol in Japan
When not to use the MP?
1) When you anticipate any obstacles during prosecuting the application.
2) When a local attorney is needed. No local attorney means the proprietor has all responsibility for any risk.
3) When trademark needs to be registered in Japan only. e.g. TM in Katakana characters
4) When there is a Risk of Central attack
5) When new G/S need to be registered … There may be different assessment as to which class the G/S fall in between each country and WIPO, which causes MF registration to be delayed.
Conclusion
1. The Madrid System is not much utilized by Japanese companies
2. When designating Japan under Madrid Protocol, please beware of the second part of individual fee and issues relating to similarity codes.
3. Advantages and Disadvantages of using Madrid Protocol in Japan
