Japan’s Experience in Joining
and Using the Madrid System

2014

ReportMadrid Experience
Sharing Report

The present publication is the result of a WIPO research report on Japan’s experience in
acceding to the Madrid system for the international registration of marks.
The project was implemented by the WIPO Japan Office (WJO), with funding provided fromthe Japan Patent Office (JPO) under the auspices of the Japan Funds-In-Trust. Research,
interviews, and drafting of the text were carried out by Jonah Asher at the WJO.
The project was coordinated, within WIPO, by Maria De Icaza and Ken-Ichiro Natsume, who
supervised the publication; managed the process through its various stages; and interacted
closely with the JPO and the International Bureau at WIPO headquarters.
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Acknowledgements!
!
We!would!like!to!extend!our!gratitude!to!the!JPO,!who!have!provided!generous!funding!
and! assisted! us! in! arranging! interviews! with! commercial! enterprises,! attorneys,! and!
government!officials.!
We! are! also! indebted! to! each! interviewed! entity! and! person,! as! listed! in! Annex! I,! for!
their!time!and!generosity!in!relaying!their!experiences!with!the!Madrid!system.!

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1.#INTRODUCTION#.........................................................................................................................................#1!
2.#TRADEMARK#LAW#IN#JAPAN#.................................................................................................................#1!
2.1!PRIOR!TO!ACCEDING!TO!THE!MADRID!SYSTEM!.....................................................................................................!1!
2.2!THE!AGREEMENT!OR!THE!PROTOCOL!.....................................................................................................................!1!
2.3!STRUCTURES!LACKING!AND!NECESSARY!CHANGES!..............................................................................................!2!
2.4!BENEFITS!OF!ACCESSION!...........................................................................................................................................!3!
3.#MAKING#THE#DECISION#TO#ACCEDE#...................................................................................................#3!
3.1!REASONING!BEHIND!ACCESSION!..............................................................................................................................!3!
3.2!DECISIONS!TAKEN!TO!CONFORM!JAPANESE!TRADEMARK!LAW!TO!THE!MADRID!PROTOCOL!.....................!5!
3.2.1!SHORTENING!THE!REFUSAL!PERIOD!...................................................................................................................!5!
3.2.2!CHARGING!AN!INDIVIDUAL!FEE!FOR!EACH!INTERNATIONAL!DESIGNATION!...............................................!5!
3.2.3!RECORDING!OF!LICENSES!IN!THE!INTERNATIONAL!REGISTER!.......................................................................!5!
3.2.4!CANCELLATION!OF!AN!INTERNATIONAL!FILING!AND!TRANSFORMATION!....................................................!5!
3.2.5!FILING!AN!INTERNATIONAL!APPLICATION!WITH!THE!IB!THROUGH!THE!JPO!.............................................!5!
3.2.6!THE!PUBLICATION!OF!NEW!GAZETTES!...............................................................................................................!6!
4.#OPPOSITION#AND#OTHER#OBSTACLES#..............................................................................................#6!
4.1!OPPOSITION!WITHIN!THE!JAPANESE!GOVERNMENT!............................................................................................!6!
4.2!OPPOSITION!AMONG!TRADEMARK!REPRESENTATIVES!AND!JAPANESE!COMPANIES!.....................................!6!
4.3!MEASURES!TAKEN!TO!EDUCATE!AND!CONVINCE!THE!PUBLIC!AND!TRADEMARK!PROFESSIONALS!...........!7!
5.#GOVERNMENTAL#PROCESSES#OF#IMPLEMENTING#THE#MADRID#PROTOCOL#......................#7!
5.1!NECESSARY!CHANGES!IN!JAPAN’S!TRADEMARK!LEGISLATION!..........................................................................!8!
5.1.1!SHORTENING!THE!REFUSAL!PERIOD!...................................................................................................................!8!
5.1.2!INTERNATIONAL!REGISTRATION!THROUGH!THE!JPO!......................................................................................!8!
5.1.3!INCREASING!PROTECTION!PRIOR!TO!REGISTRATION!.......................................................................................!9!
5.1.4!DESIGNATION!OF!JAPAN!THROUGH!THE!PROTOCOL!.........................................................................................!9!
5.2!REFORMS!REQUIRED!FOR!HARMONIZATION!AND!IMPLEMENTATION!OF!THE!NEW!LEGISLATION!.............!9!
5.2.1!CREATION!OF!NEW!SECTIONS!WITHIN!THE!JPO!...............................................................................................!9!
5.2.2!MADRID!PROTOCOL!RELATED!TRAINING!AND!SEMINARS!...........................................................................!10!
5.2.3!LANGUAGE!TRAINING!..........................................................................................................................................!10!
5.2.4!PUBLICATIONS!......................................................................................................................................................!10!
5.2.5!PAPERLESS!SYSTEM!.............................................................................................................................................!11!
6.#CHANGES#NECESSARY#FOR#USERS#....................................................................................................#11!
6.1!ORGANIZATIONAL!CHANGES!RESULTING!FROM!PROTOCOL!ACCESSION!.......................................................!11!
6.2!NECESSARY!CHANGES!AND!DIFFICULTIES!FACED!IN!IMPLEMENTATION!......................................................!12!
6.3!COST!OF!CHANGES!AND!RESULTING!EFFECTS!....................................................................................................!13!
6.4!LOBBYING!THE!GOVERNMENT!TO!JOIN!THE!PROTOCOL!...................................................................................!13!
6.5!HOW!JOBS!CHANGED!...............................................................................................................................................!14!
6.6!MADRID!FEARS:!REALIZED!OR!UNFOUNDED?!....................................................................................................!14!
6.6.1!FEAR!1:!LOSING!JOBS!..........................................................................................................................................!14!
6.6.2!FEAR!2:!CENTRAL!ATTACK!................................................................................................................................!16!
6.6.2.1!RESEARCH!..........................................................................................................................................................!16!
6.6.2.2!TRANSLITERATION!...........................................................................................................................................!16!
6.6.2.3!TRANSFORMATION!...........................................................................................................................................!17!
6.6.2.4!MARKS!WITH!NO!VERBAL!ELEMENTS!..........................................................................................................!17!
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6.6.3!FEAR!3:!THE!PROTOCOL!IS!TOO!DIFFICULT!AND!COSTLY!TO!USE!.............................................................!17!
7.#ADVANTAGES#AND#DISADVANTAGES#.............................................................................................#21!
7.1!ADVANTAGES!FOR!THE!GOVERNMENT!AND!JPO!...............................................................................................!21!
7.1.1!REVENUE!CREATION!............................................................................................................................................!21!
7.1.2!NO!FORMALITY!CHECKS!.....................................................................................................................................!21!
7.2!ADVANTAGES!FOR!COMPANIES,!REPRESENTATIVES!AND!OTHER!USERS!......................................................!22!
7.2.1!ONE!APPLICATION!...............................................................................................................................................!22!
7.2.2!QUICKER!REGISTRATION!....................................................................................................................................!22!
7.2.3!SUBSEQUENT!DESIGNATION!..............................................................................................................................!22!
7.2.4!COSTKEFFECTIVE!..................................................................................................................................................!22!
7.2.5!EASIER!MANAGEMENT!........................................................................................................................................!23!
7.2.7!TRANSFORMATION!...............................................................................................................................................!23!
7.2.8!FACILITATING!INVESTMENT!..............................................................................................................................!23!
7.3!DISADVANTAGES!FOR!USERS!.................................................................................................................................!23!
7.3.1!LANGUAGE!.............................................................................................................................................................!23!
7.3.2!LIMITED!MEMBERSHIP!.......................................................................................................................................!24!
7.3.4!CENTRAL!ATTACK!................................................................................................................................................!24!
7.3.5!MARK!AMENDMENT!RESTRICTIONS!.................................................................................................................!24!
7.3.7!POTENTIAL!ADDITIONAL!COSTS!.......................................................................................................................!24!
7.3.8!NO!CLEAR!INTERNATIONAL!DEFINITION!OF!GOODS!AND!SERVICES!..........................................................!25!
7.4!DISADVANTAGES!FOR!THE!GOVERNMENT!...........................................................................................................!25!
7.4.1!INCREASED!WORKLOAD!.....................................................................................................................................!25!
7.5!DISADVANTAGES!FOR!REPRESENTATIVES!..........................................................................................................!25!
7.5.1!RISK!OF!FEWER!CLIENTS!....................................................................................................................................!25!
7.5.2!LANGUAGE!.............................................................................................................................................................!25!
7.5.3!NEW!MANAGEMENT!SYSTEMS!REQUIRED!......................................................................................................!25!
7.6!EXAMPLES!OF!OVERCOMING!DISADVANTAGES!..................................................................................................!26!
7.6.1!THE!GOVERNMENT!..............................................................................................................................................!26!
7.6.2!APPLICANTS!AND!REGISTRATION!HOLDERS!...................................................................................................!26!
8.#RESULTS#OF#IMPLEMENTATION#.......................................................................................................#26!
8.1!SPECIFIC!EXAMPLES!AMONG!EACH!GROUP!.........................................................................................................!26!
8.1.1!THE!GOVERNMENT!..............................................................................................................................................!27!
8.1.1.1!INTERNATIONALIZATION!OF!THE!JPO!..........................................................................................................!27!
8.1.1.2!DIGITAL!IMPLEMENTATION!............................................................................................................................!27!
8.1.1.2!INCREASED!SUPPORT!FOR!SMES!...................................................................................................................!27!
8.1.2!APPLICANTS,!TRADEMARK!HOLDERS,!AND!REPRESENTATIVES!.................................................................!28!
8.1.2.1!NEW!MANAGEMENT!SYSTEMS!ADVANTAGEOUS!........................................................................................!28!
8.1.2.2!CENTRAL!ATTACK!RESOLVED!........................................................................................................................!29!
8.1.2.3!NONKJAPANESE!BASIC!APPLICATION!SAVES!MONEY!AND!TIME!.............................................................!29!
8.1.2.4!AN!INOPPORTUNE!CASE!FOR!A!PROTOCOL!APPLICATION!........................................................................!29!
8.1.2.5!A!LONG!ROAD!TO!REGISTRATION!.................................................................................................................!30!
9.#LESSONS#LEARNED#................................................................................................................................#30!
9.1!COSTKEFFECTIVE!FROM!AN!APPLICATION!AND!MANAGEMENT!STANDPOINT!.............................................!30!
9.2!THE!PROTOCOL!IS!ONLY!COSTKEFFECTIVE!IF!MANY!COUNTRIES!ARE!DESIGNATED!.................................!31!
9.3!A!PROTOCOL!APPLICATION!MAY!TAKE!MORE!TIME!........................................................................................!32!
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9.4!LANGUAGE!CONCERNS!MEAN!A!BASIC!REGISTRATION!SHOULD!BE!USED!INSTEAD!OF!A!BASIC!
APPLICATION!...................................................................................................................................................................!32!
9.5!THE!PROTOCOL!MAY!NOT!BE!EFFECTIVE!FOR!SHORT!LIFECYCLE!PRODUCTS!............................................!33!
9.6!LESS!WORRY!ABOUT!RENEWALS!AND!OTHER!DEADLINES!.............................................................................!34!
9.7!THE!PROTOCOL!IS!IDEAL!FOR!CORPORATE!MARKS!..........................................................................................!35!
9.8!DETERMINING!THE!CORRECT!CLASSIFICATION!CAN!BE!TRICKY!....................................................................!36!
9.9!CENTRAL!ATTACK!IS!NOT!A!SIGNIFICANT!RISK!.................................................................................................!37!
9.10!THE!INITIAL!LEARNING!PERIOD!CAN!BE!OVERCOME!QUICKLY!AND!SAFELY!.............................................!37!
9.11!USE!OF!DOMESTIC!AND!INTERNATIONAL!REPRESENTATIVES!ARE!DESIRABLE!........................................!38!
9.11.1!DOMESTIC!REPRESENTATIVES!........................................................................................................................!38!
9.11.2!LOCAL!REPRESENTATIVES!...............................................................................................................................!38!
9.12!IMPLEMENTATION!OF!NEW!SYSTEMS!IS!NOT!DIFFICULT!OR!COSTLY!.........................................................!39!
9.13!THE!PROTOCOL!CAN!FACILITATE!ENTERING!INTO!AND!EXPANDING!NEW!MARKETS!............................!39!
9.14!MORE!SOUTHEAST!ASIAN!PROTOCOL!MEMBERSHIP!IS!DESIRABLE!...........................................................!39!
9.15!THE!PROTOCOL!CAN!BE!USED!TO!COMBAT!TRADEMARK!INFRINGEMENT!...............................................!40!
9.16!THE!MADRID!SYSTEM!IS!A!POSITIVE!INFLUENCE!ON!THE!LOCAL!IP!SYSTEM!...........................................!40!
9.17!JOBS!ARE!NOT!LOST!AS!A!DIRECT!RESULT!OF!USING!THE!MADRID!SYSTEM!............................................!41!
10.#CONCLUSION#.........................................................................................................................................#42!
ANNEX#I#–#INTERVIEWEE#LIST#...................................................................................................................#I!
ANNEX#II#–#ADDITIONAL#EXAMPLES#FROM#INTERVIEWEES#.........................................................#IV!
ANNEX#III#–#NOTES#...................................................................................................................................#XIII!

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1. Introduction
Japan has a long and rich history of creating successful, well-known brand names worldwide,
and Japanese companies have made prodigious use of the IP system both at home andabroad. Trademark law in Japan has been in place for over one hundred years, and asJapan’s global economic position increased in the latter part of the twentieth century, so did
trademark applications in foreign countries by Japanese companies. These applications
proved to be complex, time consuming, and costly, because each country has its own
trademark laws, application procedures, and language. In order to lessen these burdens,
increase market access and also promote more foreign investment in Japan, in 1997 theJapanese government made the decision to accede to the 1989 Madrid Protocol Relating to
the Madrid Agreement (the “Madrid Protocol” or the “Protocol)1, which it did in March 2000.
This report shares Japan’s experience of implementing the Madrid Protocol and describes indetail the pros and cons of accession to the Protocol, including lessons learned through theprocess by companies, representatives, and the Japanese government.

2. Trademark Law in Japan
2.1 Prior to Acceding to the Madrid System
Japanese trademark law is characterized by three important facets: (1) the first-to-file rule;(2) substantial examination to determine the viability of a registration; and (3) publication
before and after registration. Trademark law in Japan is based on the “registration principle,”
which means that the Japan Patent Office (JPO) does not grant an exclusive right to a
trademark application before a mark is registered.
Japan’s first trademark law was the Trademark Ordinance of 1884, which established theprinciples of trademark registration and examination, and implemented the first-to-file rule.
The Trademark Ordinance was revised three times during its lifespan, in 1888, 1899, and1909. In 1921 the Trademark Ordinance was replaced with the Trademark Law, which would
prove to be the most extensive change to Japanese trademark law. In April 1959, the findingsof a post-war commission tasked to investigate amending the 1921 Trademark Law led to thepassage of the Trademark Act of 1959, which came into force on April 1, 1960. The new law
had many significant additions, such as the requirement for a trademark to be
distinguishable from other marks and a new thirty-four-category classification system towork in harmony with international classifications of the time. In June 1975 an amendment
to the Trademark Act was passed and enacted on 1 January 1976 with the goal of increasingtransparency and eliminating the backlog in applications. A number of additional
amendments followed the 1975 amendment, including the Nice Agreement revision of 1992
and compliance to the TRIPs Agreement in 1994. Further amendments came in 1996 and1998 before the 1999 amendment, which implemented the Madrid Protocol in Japan andestablished a prompt publication system for trademark applications and registrations. For adetailed list of the milestones in the history of Japanese trademark legislation, please see
Annex II.
2.2 The Agreement or the Protocol
Although the Madrid Agreement has been in effect since 1891, Japan never became asignatory because of the country’s focus on the domestic market and a lack of many of thenecessary structures for international trademark applications at the time. In addition, the!

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language issue was a substantial hurdle because applications under the Agreement must be
submitted only in French, and the risk of Central Attack was also a concern. The introductionof the Madrid Protocol made the Madrid System more attractive to Japan by addressing thelanguage and Central Attack concerns.2 With regards to language, the Protocol made it
possible for applications to be filed in English, Spanish, or French. With regards to Central
Attack, under the Protocol, when an international application is subject to a Central Attackand canceled, the international application may be transformed into national applications ineach of the designated Contracting Parties, maintaining the priority date of the original
international registration. Since the Protocol addressed many of the shortcomings of theAgreement, by the time Japanese companies were increasing their international presence
and Japanese trademark law was becoming harmonious with international laws, theProtocol became a very attractive option.
An additional major advantage the Protocol brought was its longer refusal period. Japan,
along with other countries such as the United Kingdom (UK), the United States of America(USA), and Singapore, traditionally had an extensive and detailed examination system.3 This
made the refusal period of the Agreement less attractive to Japan, as it requires all
international examinations – no matter their difficulty or other constraining circumstances– to be completed within twelve months. The Protocol, however, allows for the refusal period
to be twelve or eighteen months, which was much more in line with the practices of the JPO
and made it even more attractive than the Agreement.
Yet another advantage was the fact that inter-governmental organizations could makeapplications under the Protocol instead of only individuals or corporations, as is the caseunder the Agreement. This has far-reaching implications, as an application under theProtocol designating an entity such as the European Union (EU) would only count as one
designation yet the application would be valid in all EU member states. The JPO recognizedthat the Madrid system would be an important and cost-effective means to allow Japanesecompanies to remain more competitive through designating many countries through one
easy application.4 Lastly, the Safeguard Clause (which assures member states that they canaccede to the Protocol but still be bound by the terms of the Agreement) made the Protocol
much more desirable.
2.3 Structures Lacking and Necessary Changes
Under the rules of the Protocol, the Office of a Contracting Party must process all trademark
granting procedures. Therefore the changes that Japan adopted for Protocol accession were
implemented for the entirety of the Japanese trademark registration system, regardless ofwhether the applicant was making a national or international application. The 1975amendment significantly shortened the time required for trademark examinations; however,a further reduction was still necessary because the amendment did not result in completionof examination within eighteen months for all cases.
The first step taken to reduce the examination period was for the JPO to outsource certain
workflows and increase the number of examiners and staff to conduct the necessary researchfor examination. Secondly, the Japanese government implemented regulations pertaining tointernational applications in general, and more specifically to submitting documents
necessary for applying to the IB for international registration from Japan. The third way wasthrough devising special exceptions concerning applications for international trademark
registration, including regulations for applicants seeking international protection under the!

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Madrid Protocol when the Contracting Party is not Japan but designates Japan in theapplication. Fourthly, additional special exceptions relating to international trademark
registrations were created in the form of regulations for central attack (to be discussed later).
Lastly, the JPO computerized the maintenance and communication means of allinternational trademark registration applications, which positively impacted the speed of theexamination process and the management of all applications.
It was also necessary to establish a new section within the JPO to handle the formalities
required by Madrid applications, and to implement all required elements, such as a means toeasily communicate with the International Bureau (IB) of WIPO, make the necessary fee
payments, and to communicate the requirements, correspondence, and renewal notices toapplicants. To comply with the Madrid Protocol, the JPO established the International
Trademark Application Division and the Examination Division to specifically handle MadridProtocol applications.
Perhaps the most important and fundamental necessary change was the establishment of
Article 7-2 in the 1999 amendment of the Trademark Law. This article regulatesinternational trademark registration through the Japanese national trademark registration
system, which is in harmony with the Madrid Protocol and the international industrial
property right system. Because an international application through the Madrid Protocol isbased on a national application, without the establishment of Article 7-2 Japan would nothave been able to accede to the Madrid Protocol. Moreover, in order to provide protection formarks as soon as possible, Japan established a complimentary system that enabled theapplicant to obtain a certain amount of protection for a trademark prior to its actual national
registration. In addition, it introduced a system that granted an applicant the right to seek
damages prior to official registration. These two systems were necessary in order to becomecompliant with the Madrid Protocol, which grants an applicant advanced protection in all
designated member states.5
2.4 Benefits of Accession
The overarching reasoning behind Japan’s decision to accede to the Protocol was
multifaceted, and the country’s leaders took into account the Madrid Agreement as wellwhen the decision was made. The Protocol was chosen because of the following benefits:••••

International applications could be submitted in English, French, or Spanish;
Cost-effective means of international trademark registration;
Sufficient examination period to notify applicant of refusal (the 18-month “refusal
period”); andEasy and fast international registration due to basis on a national registration orapplication.

3. Making the Decision to Accede
3.1 Reasoning behind Accession
In 1997, the Japanese government commissioned the Industrial Property Council
Subcommittee on Trademarks (the Subcommittee) to undertake a feasibility study of joining
the Protocol, and address concerns such as what problems the Japanese legal framework for
trademarks posed to acceding to the Protocol.6 Of specific concern were the examination!

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period, effectiveness of international registration, the register, publication, replacement, andcentral attack. An important way in which the Subcommittee addressed these issues was
through a survey with Japanese companies and a series of meetings with the JPO andrepresentatives of the IP industry.
Table 1
Top Disadvantages of Direct National
Applications(45% response rate)
1

Expensive

2

Complicated application and registration procedures

3

Difficulty in integrated management of rights after
acquisition

4

High variance of time required to establish rights
depending on the country5

Language difficulties

The survey asked respondents tospecify the disadvantages of making
direct national applications abroad
and whether or not accession to theProtocol would mitigate thesedisadvantages enough for them touse it instead of making direct
national applications. In total, 94%
of respondents agreed that thebenefits of the Protocol would
considerably – if not entirely –mitigate these disadvantages, and
81% said that they would consider
filing applications through theProtocol if Japan acceded.
Furthermore, 22% of the respondents believed that Japanese accession to the Protocol would
promote the accession of the Protocol in other Asian countries. In total, 94% of respondents
agreed that accession to the Protocol would be beneficial and 95% replied that they would
consider using the Protocol for future international applications7. The results of the survey
and the meetings with the JPO played a significant role in convincing the Japanese
government that accession to the Protocol would give Japanese companies a more effective
and convenient way to make international applications and promote the adoption of the
protocol in other countries, particularly in the Asia-Pacific and North American regions.
Accession to the Protocol also meant that Japan’s brands – some of its most important andvital exports – could be more easily protected and controlled internationally. Moreover, thebenefits of the Protocol would make it easier not just for large multinational companies, butalso for SMEs, to protect their trademarks abroad. Improvements in the domestic trademark
application examination procedures meant that the JPO could keep up with the level ofpromptness that was required by the Madrid system. Furthermore, the Protocol helps
multinational Japanese companies implement their expansion plans faster, which ultimately
benefits the economy.
Two equally important changes happened outside of Japan at the time that contributed to
the government’s decision of Protocol accession. First, the number of Protocol members
increased from four at the time of the Protocol’s establishment to 33 by the time theSubcommittee finished its work.8 These members covered 40% of the countries in which
Japanese users filed applications abroad, and also included major markets in Europe andChina, where Japan was anticipating having a continued high level of export trade. Second,the USA – one of Japan’s major export markets – was indicating its intention to accede to
the Protocol. The Subcommittee completed its report in late 1998, and on 26 November ofthat year recommended accession to the Protocol to the Japanese government.

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3.2 Decisions Taken to Conform Japanese Trademark Law to the Madrid Protocol
3.2.1 Shortening the Refusal Period
In accordance with Article 5(2)(b) of the Protocol, the decision to reduce the refusal period to
18 months was made out of necessity. Without meeting the terms of this Article, Japan
would not be in compliance with the Protocol. At the time, the refusal period was generally
around twenty months or longer, so Japan implemented new procedures and a Cabinet
Ordinance to reduce this to a maximum of eighteen months from the date of the application
filing.9
3.2.2 Charging an Individual Fee for Each International Designation
Pursuant to Article 8(7)(a) of the Protocol,10 member states have the right to charge an
individual fee in connection with each international designation and the renewal of any suchregistration. Japan decided to implement the requirement for an individual fee for two
reasons. First, it would result in equal treatment of national and international registrationsin that they would be generally subjected to the same fees. Second, Japan traditionally has
relatively high registration and renewal fees, and if these are kept for international
registrations, they can serve as a deterrent to applicants who wish to register theirtrademarks but have no intent to use them. Japan availed itself of Rule 34(3)(b) of theCommon Regulations of the Protocol, which states that the individual fee can be paid in two
equal parts.11
3.2.3 Recording of Licenses in the International Register
Although Japanese trademark law provides for the recording of licenses, the country decided
not to extend this to the recording of licenses in the International Register,12 and thus thosethat are recorded in the International Register have no effect. This is in reference to Rule
20bis(6)(b) of the Common Regulations.13
3.2.4 Cancellation of an International Filing and Transformation
Because of the new provisions outlined in the Protocol that mitigate the risk of central attack,an international application may be transformed to a national application as a designatedcountry.14 Taking this into consideration, in the case an international filing is cancelled
under Article 6(4)15 of the Protocol, the holder may file a national application in Japan
within three months from the cancellation of the international registration. In the case of aninternational registration having effect in japan on the date of denunciation under Article
15(5)(b)16 of the Protocol, the holder is no longer entitled to file the international application
because of the denunciation. However, they may file a national application within two years
from the date on which the denunciation under Article 15(3)17 of the Protocol took effect.
3.2.5 Filing an International Application with the IB through the JPO
According to the rules of the Protocol, an international application must be made to the
Office of Origin. New applications are therefore submitted to the JPO, which then files themwith the IB. In addition, Japan implemented a procedure for designating Japan for an
extension of territorial protection that can be undertaken through the JPO.18 Fees for these
services are paid directly to the IB at WIPO. Such changes required corresponding changes!

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to Japan’s trademark law, and also required the amended law to reflect the repercussions
outlined in the Protocol should these fees not be paid within the allotted time period.
3.2.6 The Publication of New Gazettes
As the amended trademark law of Japan would provide a certain level of protection to those
trademarks that have been subject to application but not yet to registration, Japan started
publishing two new gazettes: the Publication of International Trademark Applications andthe Publication of Registered International Trademarks19.

4. Opposition and Other Obstacles
4.1 Opposition within the Japanese Government
In the case of Japan’s accession to the Protocol, there was no discernable opposition within
the Japanese government, specifically those governmental arms tasked with its
implementation – the JPO and the Ministry of Foreign Affairs (MOFA).20 This is due to anumber of factors, not the least of which is the fact that the impetus for joining the Protocolcame within the Japanese government.21 Indeed, interviews with the JPO confirmed that
there was little, if any, opposition in the government to Protocol accession.22 The first steps
taken to implement the Madrid Protocol into Japanese legislation took place as early as 1996,
and by the time accession was achieved in 2000, the speed and success at which Japanjoined left little room for opposition to accession in the government.23
4.2 Opposition among Trademark Representatives and Japanese Companies

Protocol!Members!

Because of the nature of the Protocol, an argument can be made that representatives havethe most to lose.24 However, there was little opposition voiced from Japanese representatives,
which is due to a number of factors. First, Japanese users (companies, organizations, orother applicants) have traditionally relied on the services of representatives, and eventhough these users would be able to make Protocol applications directly themselves, there
was little need for fear on the part of representatives that this would occur en masse. This infact turned out to be the case, as
approximately 80% of all Japanese users
continue to use representatives even forProtocol applications. 25 Second, results of
JPO surveys among major Japanesecompanies found that 81% of them plannedon using the Protocol to make international
Japan!Accedes!to!
applications.26 Because this number was sothe!Protocol!
large, there was little cause for concern
among representatives that business would
Figure 1 - Madrid System Membership Increase
decrease, since Japanese users traditionallyuse representatives, Protocol application or not. Furthermore, before accession a JPO
sponsored survey found that only 2% of respondents were of the view that the Protocol had
no positive merits.27 Lastly, when Japan acceded to the Protocol many countries in major
markets for Japanese users had yet to accede.28
Although the number of member states in the Madrid System has increased since Japan
acceded, a good portion of the major markets of Japanese users are still considering
accession, which means national applications and representatives are still required.29 Indeed,!

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most of those representatives interviewed stated that business has continued to be healthy
overall.30
While representatives have not been overly concerned about the Protocol’s effect on theirbusiness, that is not to say that there were no initial concerns. During the JPO’s public
relations activities in the buildup to Protocol accession, on a number of occasions
representatives expressed their concern that business might go down and jobs might belost.31 A number of interviewees32 also explained that while there was some worry among
representatives, it was not great enough to warrant an official community-wide opposition.
Furthermore, most of the representatives interviewed explained that they feel the Protocol is
an important and useful framework for Japanese users and the Japanese trademark system,and that the harmonization with the international IP system made possible by the Protocol
will have more lasting benefits than drawbacks. Finally, overall interviewed representatives
are more concerned with successfully making Protocol applications for their clients thanwith any minor loss in business.
4.3 Measures Taken to Educate and Convince the Public and Trademark Professionals
When the Japanese government decided to take the necessary steps to accede to the Protocol,
the JPO worked with MOFA on a number of public relations (PR) campaigns to convince
Japanese users that the Protocol was not only in their best interest, but also in the bestinterest of Japan.33 The first major initiative undertaken was to conduct seminars on the
background and use of the Protocol in major commercial centers throughout Japan. This
raised public awareness of the Protocol and also gave the government the opportunity to take
into consideration the opinions of potential users to better implement the Protocol.34 As of2011 these efforts continue, as the Japanese government is regularly conducting at least four
seminars per year at major commercial centers in the country such as Tokyo, Osaka, andKobe.35 Open to users, trademark agents, and industry representatives, the seminars havebeen very helpful in educating the public and demystifying unsubstantiated fears
surrounding the Madrid system. While these seminars are not specifically targeted at small
and medium-sized enterprises, the information is presented in a way that all potential users
can benefit, regardless of their size. Because SMEs represent a group that can enjoy
significant gains due to using the Protocol, the government has also implemented a numberof local information centers and help desks throughout the country to provide the same
information to potential users such as SMEs who are based outside of the major commercial
centers.36

5. Governmental Processes of Implementing the Madrid Protocol
The first step the JPO took in implementing the Protocol was to create a Preparation Group(PG) to develop a process for how Japan would join the Protocol. 37 While the JPO’s
experience in joining the Patent Cooperation Treaty (PCT) was helpful, the strikingly
different nature of the Protocol meant that they could not go about it in exactly the same way.
Comprised of three individuals, the PG had weeks of high-level meetings with WIPO andmade a detailed analysis of what impact the Protocol would have on Japan, what wasnecessary for accession, and how the changes would be achieved.38!

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5.1 Necessary Changes in Japan’s Trademark Legislation
Accession to the Protocol required a number of changes in Japanese trademark legislation.
As a result, in May 1999 Japan enacted an amendment to its Trademark Law, which added achapter entitled “Special Provisions under the Protocol of the Madrid Agreement.”39 This
new chapter – Chapter VIIbis – provided a legal means to implement the decisions the JPO
outlined in Section 3 of this report, among other aspects. A number of the more importantfeatures of Chapter VIIbis are described in further detail below.
5.1.1 Shortening the Refusal Period
Cutting the first action period from twenty months or longer down to eighteen months
represented one of the biggest challenges Japan faced when it implemented the Protocol. To
do so, the JPO adopted several important strategies. First, it introduced a paperless system
for application procedures, which significantly modernized and sped up the workflow.
Second, it increased the number of application examiners dedicated to implementing theProtocol. Lastly, it outsourced certain routine steps of the examination process. This allowed
examiners at the JPO to focus on the more substantial aspects of an examination and theresulting decision.
Since the amendments made to Japanese trademark law to comply with the Protocol weresignificant, the government took steps to ensure that those involved in the process wereadequately educated on the amendments and their repercussions. Important ways in which
it did so were to revise the Trademark Examination Manual (which was first introduced in1981) and ensure that information about the JPO’s examination procedures and standards
were available to the public and thus more transparent. In addition, it also made trademark
search systems and databases publically available and ensured that information on wellknown Japanese trademarks were available in English. The wealth of new information
available allowed applicants to more easily predict the results of a trademark application,
which significantly reduced the number of applications that were destined to be refused fromthe start.
In addition, the JPO introduced a system for filing trademark applications via the Internet.
Applications submitted online could be in hypertext-markup language (HTML, a major
coding language of the Internet) and be accompanied with high quality, full color images instandard formats, which is important for trademarks with color attributes. The JPO also set
up the necessary infrastructure to allow for online applications for appealing an examiner’s
decision. All of these strategies reduced the JPO’s first action period from an average oftwenty months to seven months.
5.1.2 International Registration through the JPO
Article 7-2 of Chapter VIIbis in the Application for International Registration Section of theamendment represents one of the most important aspects of the 1999 amendment. This
article regulates the process of Protocol international trademark registrations through the
JPO, with the aim of international harmonization in the IPR system. Under Article 7-2, any
Japanese national or other equivalent (such as a non-Japanese national with a realcommercial presence and interest in Japan) may file an international application on thebasis of a registration or application completed under the amended Japanese Trademark Act
via the JPO as the Office of origin.40 A single application, based on a national application or!

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registration, serves as the international application. The working language for international
applications made to the JPO is English. The JPO chose to apply the individual fee, and for
an application to be made this must be paid to the IB. Subsequent designations, renewal, orchange of ownership of an international registration may be filed directly with the IB or
through the JPO.
5.1.3 Increasing Protection prior to Registration
Because of the necessity to harmonize Japanese law to the provisions of the Protocol, the1999 amendment established a system that enables an applicant to obtain a certain amountof protection for their trademark prior to its actual registration. In addition, the system
grants an applicant the right to seek damages for infringement prior to trademark
registration.
5.1.4 Designation of Japan through the Protocol
Accession to the Protocol meant that applicants from other countries could designate Japanthrough the Protocol, and as such a corresponding system needed to be established. As aresult, the 1999 amendment states allows for subsequent designation of Japan for existing
applications or registration. In the event of a request for a subsequent designation, theapplication or registration shall be treated as a trademark application filed on the date on
which the subsequent designation pertaining to the international registration is recorded in
the International Register. Such a request, while regarded as an international trademark
application, is treated equally with domestic applications and therefore subject toexamination and trial judgment. An exception is made to this for the renewal of aregistration and transfer of trademark rights. In addition, if an application originating fromabroad and designating Japan was terminated due to a central attack, a new domestic
application may be filed to conform to the transformation policy of the Protocol.
5.2 Reforms Required for Harmonization and Implementation of the New Legislation
Training JPO staff and educating the public and those involved with international trademark
registration was equally important to the necessary legislative changes. The Japanese
government – through the JPO and other partners – implemented these initiatives throughmany comprehensive phases and educational programs, which served to help JPO staff
prepare for the Protocol, effectively handle incoming Protocol applications and those
applications designating Japan, and provide a high level of education for users, lawyers,
trademark agents, and all other related parties.
5.2.1 Creation of New Sections within the JPO
In order to appropriately deal with the influx of Protocol applications, the JPO created aseparate department to deal exclusively with Protocol applications. At the outset, thedepartment had only three examiners, which eventually increased to twenty examiners, ten
trial examiners, and ten clerical staff by 2011.41 The department consists of two divisions: theInternational Trademark Application Office (the Application Office) and the International
Trademark Application Examination Office (the Examination Office).
The Application Office is primarily responsible for receiving applications from Japaneseusers and conducting the formalities of an initial examination, and also examining
documents needed for procedures in Japan when Japan is designated in a Protocol!

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application. The Examination Office is primarily responsible for undertaking the more
substantive application examinations for international applications that designate Japan andoriginate from abroad, and is the first point of contact with the IB. To ensure the efficient
operation of these two offices, the JPO prepared examination manuals and developed acomputer system for the easy management of Protocol applications.
5.2.2 Madrid Protocol Related Training and Seminars
Many of the aspects of the Protocol were new to JPO staff members, Japanese users,
trademark agents, and prospective Protocol applicants. As such, it was necessary to provide
adequate training to ensure that applications made under the Protocol are completed
correctly, and to dispel any fears concerned parties may have had42. To do so, the JPO
sponsored training sessions at WIPO headquarters in Geneva, Switzerland, for JPO
examiners and also provided them with foreign language training. Externally, regularseminars and yearly working level briefing sessions in four major Japanese cities targeting
the IP community have served as a tool to increase publicity for the Protocol and educate
potential Japanese users. The JPO also continues to implement training through theindependent National Center for Intellectual Property Information and Training (NCIPI).
Furthermore, the JPO Training Committee (JPOTC) develops additional training projects
and an annual training plan, among other activities.
5.2.3 Language Training
Language training has been critical to the Protocol’s success in Japan.43 Because of thelinguistic nature of the Protocol (applications in English, French, or Spanish) and the higher
level of English ability in Japan compared to French or Spanish, the JPO decided that all
Protocol applications would be processed, examined, and managed in English. Because of
the specialized nature of the English required, the JPO used the services of external English
instructors with the necessary skills to help JPO staff navigate the intricate and complex
sentences that accompany Protocol applications. This did include bring with it an additionalcost, however the JPO is of the view that this was necessary and minimal overall.44
Through the NCIPI, the JPO continues to make a concerted and comprehensive effort toprovide as much language training as is feasible. In addition to the Protocol specialist, anumber of oral English courses are provided. The JPO officials interviewed for this reportstressed this issue, and said that because communication between WIPO and the JPO is in
English, an advanced skill level is vital for the continued success of the Protocol in Japan.45
As a complement to oral training, the JPO provides training in written English to ensure thatexaminers and staff develop language skills that are sufficient to effectively handle
documents in English that originate from abroad. In addition, training is provided to help
staff master their language ability more fully so they can participate in and manage meetingson an international level. The JPO has also implemented at regular intervals specialized
language training for those who are, or who will be, engaged in Protocol examinations.
5.2.4 Publications
The JPO publishes a wide array of informational material such as “How to use the System forInternational Trademark Registrations,” which serves as a guide for new users, outlining theProtocol and explaining the necessary procedures, fees, advantages, disadvantages, andother key points of the Protocol. The JPO also publishes a book – “Guidance on the!

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Procedures for Application for International Registration” – that describes the Protocol ingreater detail, and explains how users can apply for international registration through the
JPO and also how they can apply for an international registration through a designatedcountry’s trademark office. A companion book – “Application Forms for International
Registration” – provides detailed descriptions in Japanese on the appropriate way in which
to fill out application forms. The JPO has also taken upon itself to translate many related
forms into Japanese for reference purposes, and many secondary publications are alsoavailable through the efforts of the NCIPI.
5.2.5 Paperless System
Prior to the Protocol going into effect on January 1, 2000, the JPO already had a paperlesssystem in place, as it started received online applications for patents and utility models as
early as 1990. This had to be expanded to trademarks, so in 2000 the JPO developed anadvanced computer system for administering the information for all Protocol applications
and registrations and to also implement an effective means of electronic communication.46
Four years following the implementation of the electronic system for trademarks, over 80%
of all trademark applications (domestic and international) to the JPO were filed
electronically. Still in use, this system has been continually updated and is an integral
component to the continued successful management of the Protocol in Japan.47

6. Changes Necessary for Users
6.1 Organizational Changes Resulting from Protocol Accession
Before Japan’s accession to the Protocol, international registration by Japanese entities
could be defined by three broad types: (Type 1) those who made many direct national
applications abroad for a wide array of products and services; (Type 2) those who only madedirect national applications abroad for their major products, services, or corporate brands;
and (Type 3) those who did not make any international applications. Although both before
and after Protocol accession most Japanese users avail themselves of the services ofrepresentatives, the Protocol has espoused a variety of organizational changes for each typeof user.
Because most Type 1 users have extensive experience with international registrations, theyfound that the Protocol has not completely negated the need for national applications. Whilethese users have implemented appropriate organizational changes when necessary, mostreported that there was no major change to the management of their organization and IP
division or increase in workload. Over half of these interviewed users stated that theydecided to use the Protocol because it would require less work. In addition, a few of theseinterviewed users explained that the Protocol allows them to easily manage all of theirtrademarks under one roof (i.e. at the user’s headquarters). Because Type 1 users tend tohave subsidiaries in other countries that are members of the Agreement, little training toprepare for the Protocol was necessary. Out of those interviewed, most decided to use a mixof national and Protocol applications while the remaining decided to file Protocol
applications exclusively.
Type 2 users – which represent most of those interviewed – are those users in Japan thathave broad market reach through a number of major products and brand names, but who
are more focused on the domestic market, other specific regional markets, and/or have!

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products and/or services that do not require the use of trademarks to a great extent (such as
those with extremely short lifecycles). Among Type 2 users, about a quarter of them tend tohave a major corporate brand (or brands) that is tied to their products and/or services withdifferent names for different markets. These users have a small number of internationalmarks, while they have many different regional marks abroad. Among this type of user, half
decided to use the Protocol for their major international marks and continue to use nationaland regional systems for other marks, about two-fifths decided to use the Protocol on a strict
case-by-case basis founded on a pre-determined set of criteria, a few decided to use theProtocol for all of their marks (provided it is in their best interest), and a few more decided
to abstain completely from using the Protocol for the time being, despite prior experience.
Those in Type 2 that did decide to use the Protocol stated that some internal changes werenecessary, but most stressed that these were not substantial. Some users developed intricate
ranking systems for their products and associated marks, and make the decision based on amark’s rank. All of the interviewed users that utilize such ranking systems use a combinationof Protocol, national, and regional (e.g. CTM) applications to compensate for extraneous
factors (such as provisional refusal or unforeseen legal challenges). Another commonly usedmethod for almost all Type 2 users is a cost-benefit analysis of using the Protocol for eachmark. Because Type 2 users tend to have more localized goods and/or services, over half ofthese interviewed users said that a Protocol application is unnecessary in many cases. The
rest of interviewed Type 2 users make Protocol applications only for their major worldwide
marks. Nearly all interviewed users stated that the organizational changes implemented for
the Protocol were of minimal cost and time, and most said that they desire to increase theiruse of the Protocol.!
Our final type of users – Type 3 – are those interviewed users that decided not to continue to
use the Protocol after trying it once or on a number of occasions. As expected, they haverequired little, if any, organizational change. All of these interviewed users stated that it was
indeed unfamiliarity and a perceived increase in workload – among other concerns – that led
them to decide to not use the Protocol.
6.2 Necessary Changes and Difficulties Faced in Implementation
The single most important change that was necessary for a majority of interviewed users was
the introduction of a policy todetermine if a Protocol application isbeneficial (e.g. cost-effective, faster,etc.) and also if the proposed markwould be viable as a Protocol
registration. Figure 1 shows how
interviewed users handle this new
research burden. Some explained that
because so many countries can be
designatedinone
application,
protection is sought for a mark in morecountries than might be the case for
Figure 2 – Delegation of Research Burden
national applications.
Out of thoseinterviewed, most enacted a cut-off policy for when a Protocol application is made or not,while the remaining had no official policy but made the decision on a case-by-case basis. Of!

12!

those users with the policy, a few use the Protocol if three or more countries will be
designated, about 2/5 use it if there are five or more designated countries, and less than 1/5
use it if there are ten ore more designated countries, while over half have no such specificrule set firmly in place. However, all interviewed users stated that, provided it met all otherinternal policies, the Protocol would be used for a mark if protection were sought for in morethan ten countries. Some interviewed users stated that the deciding factor was the number ofProtocol countries in which they planned to use the mark in the future and were Protocol
members.
Accession to the Protocol generally meant that, for those interviewed users that utilize it, a
new internal maintenance system was necessary. These changes fell into three broad
categories: (1) updating the previous system; (2) developing a new system solely for Protocol
applications but that complements the system for national applications (this was the mostcommonly cited change); or (3) the creation of a completely different maintenance systemthat encompasses all types of trademark application (national, CTM, Protocol, etc.).
Regardless of the type of maintenance system, most stated that implementation caused no
major financial, time, or human resource burden because they already had the capability
and/or financial resources available. This shall be examined further in Section 9.11.1.
6.3 Cost of Changes and Resulting Effects
For almost half of interviewed users, a cost-benefit analysis of implementing necessarychanges found that the cost is negligible and would not be a core reason why the changes
would not be implemented. 48 For nearly every interviewee a new internal policy was
implemented, which consists of a simple set of new guidelines that demanded no major cost.
This is due to the fact that the new policies are simple to enact and do not require tangible
resources (for example, office equipment that physically exists): including the Protocol in thelist of options, developing criteria for when the Protocol is used and when it is not used, andgoing over the pros and cons of the Protocol for a specific mark during the decision-making
process. Interviewed users tended to agree that the most significant cost for implementing
such policies is time and that while this did lead to some late nights, there were no
significant negative effects on their business operations as a result. 49 For those that
implemented a new management system specifically for Protocol applications, mostexplained that this change brought minimal cost, and that the end result was a positive effecton their overall trademark management system. 50 Some interviewed users used theopportunity to harmonize the rest of their trademark management systems with that of their
new Protocol management system, which saved time and money while increasing efficiency.
A few interviewed users stated that the new systems made management more difficult, butthey mentioned that this was likely more to do with the unique nature of their trademarks
and system than with an issue concerning the Protocol.
6.4 Lobbying the Government to Join the Protocol
After the Protocol went into effect in 1990 (before Japan was a member), a number ofJapanese companies with subsidiaries or regional headquarters in Protocol member states
started to make Protocol applications.51 Impressed with the ease of use, cost-effectiveness,and speedy processing of a Protocol application, these users realized that it would be very
beneficial if they could make international applications from their home country. As interest
grew and the years went by, the JPO received a number of requests from potential Japaneseusers lobbying for Japan to accede to the Protocol.52 Realizing that it could no longer ignore!

13!

the demand, in 1996 the JPO entered into a feasibility study to first determine if it would bepossible and in Japan’s best interest to join the Protocol.53 With the results coming backaffirmative, in 1998 Japan submitted a survey to over 1,000 of the largest potential users, ofwhich over 700 responded. A majority of 90% stated that they would use the Protocol if
Japan acceded. With the knowledge that accession would be feasible and in Japan’s bestinterest, the JPO, MOFA, and METI worked together to successfully accede to the Protocol.54
6.5 How Jobs Changed
While no two users are exactly alike, interviewed users in general specified three major ways
in which their jobs changed: (1) workload; (2) trademark management; and (3) research.
Regarding workload, nearly every interviewee explained that there was a change; however
there was a good deal of variation as to the type of change. As we can see in Figure 2, mostinterviewed users stated that their workload has gotten less while the remaining said that
their workload has increased. Among those, Figure 2 and Figure 3 provide a further
breakdown, in which nearly half said that their workload is only less if they use a third party
representative, while some found that there was no change and others explained that it
increases even if a representative is used. Furthermore, most interviewed users stated thatthe volume of work increased initially, but as they got used to how the Protocol works theyexperienced a decrease in workload.
From this information we can see that a majority of interviewed users experienced anincrease in workload when they first used the Protocol, even if they used a representative.
Representatives as well experienced a similar increase. This is due mostly to unfamiliarity
with the system and the work necessary to actually make successful Protocol applications.
For those that had more initial capacity (that is, money, time, and human resources), theincrease in workload was negligible. For those with less initial capacity, the increased
workload made more of an impact. Furthermore, users in Japan tend to talk amongst
themselves about the Protocol and learn from one another. Early adopters were at a
disadvantage because they did not have a mentor, but those that came after learned a great
deal from their predecessors and used that knowledge to lessen the any negative impact(s) of
an increased workload. Second, most interviewed users found that the overall workload
when it comes to making and managing trademarks through the Protocol diminishes as time
passes. Finally, we can see from Figure 2 that the workload has either not changed or issignificantly less for those users that utilize representatives, and it has also decreased for
those users without representatives.
6.6 Madrid Fears: Realized or Unfounded?
When Japan first acceded to the Protocol, a minority in
the IP community feared that the disadvantages would
be too great and cause a number of problems. The
following are the top fears that were voiced by theinterviewed users for this report.

Table 2Top Fears of Accession
Among Interviewed Users
1

Job Losses

2

Difficult and Costly to Learn/Use

3

Central Attack

6.6.1 Fear 1: Losing Jobs
Prior to accession, there was some fear that the ease of making a Protocol application could
result in the loss of jobs. However, at the time of this writing, all interviewed users statedthat not a single person lost their job as a direct result of the Protocol’s use. One interviewed!

14!

user did face a minor restructuring of their IP department in which some positions weredeemed redundant, but this was not a direct result of using the Protocol. A few interviewed
users have actually increased the number of people in their trademark divisions since using
the Madrid System and some others feel that more jobs will be required because of using theMadrid System. Because the bulk of the work continues to be undertaken by representatives,
there has not been the necessity to restructure trademark and IP sections simply due toProtocol use.
Interviews were conducted with trademark agents and lawyers55 in Japan to gauge the effectof Japan’s accession to the Protocol on their business. Every interviewee stated that they
believe the Protocol is an effective means to easily protect and manage trademarks aroundFigure 4 – Change in Overall Workload
since Using the Protocol

Figure 3 – Ease of Making a Protocol Application
Compared to a National Application

the world and that SMEs in particular stand to reap many benefits. At the same time, theseinterviewees are aware that the ease of use of the Protocol may result in changes in theirworkflow and, perhaps more importantly, the amount of business they receive. Before Japan
acceded to the Protocol, some fear was voiced from representatives in the country as topossible negative consequences.56 However, because of the historical relationship between
Japanese users and representatives, a majority of representatives were confident thatJapan’s accession to the Protocol would not significantly hinder their business.
Interviews have yielded three possible scenarios Japanese representatives could encounter:
1. A majority of the firm’s clients move towards exclusive in-house use of the Protocol
for international applications;
2. A majority of the firm’s clients use a mix of Protocol and other types of applications;and
3. A majority of the firm’s clients extensively use the Protocol but still remain clients.
It is fair to say that a firm’s business would suffer, and job losses could occur, if one of thefirst two scenarios were to occur. Interview results have shown that the last scenario holds
true for most cases, which is due to two important factors. First, a majority of Japanese users
continue to use representatives because of issues ranging from language difficulties to easier
management. Second, Protocol use among Japanese users is still relatively low, hovering
around 25% as of late 2011, and most users continue to procure the services ofrepresentatives for all of their other trademark applications, Protocol or otherwise. As aresult, most interviewed representatives stated that there has been no major impact on!

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revenues as a direct result of Japan’s accession to the Protocol, with the remainder
explaining that there has been a minor reduction.
Since a Protocol application goes through the IB at WIPO, there is technically no need for
local legal representation for Protocol applications originating from other countries anddesignating Japan. Additionally, more Protocol applications translate into fewer direct
national applications. Combined, these two issues could decrease revenue and jobs for local
representatives. In Japan, it is true that there has been some reduction in the procurement of
the services of representatives for outside Protocol applications. 57 However, while thenumber of clients may have diminished, for nearly every interviewed representative, theoverall financial loss has been negligible. This is because once any Official Action (objection,
provisional refusal, etc.) takes place in a designated country, local representation is required
to resolve the issue.58 Fees charged for such legal services are generally high, so while thenumber of clients may decrease, local representatives and agents can recoup any losses
incurred by providing legal services in response to Official Actions.
6.6.2 Fear 2: Central Attack
In Japan, before accession to the Protocol companies and other users were not overly
concerned about Central Attack. After eleven years of Protocol use at the time of this writing,the interviews conducted for this research has shown that this remains to hold true. Out of
those interviewed, some stated that Central Attack caused them some concern, and a few
have decided not to use the Protocol extensively because of fears of Central Attack. Althoughsome interviewed users did have experience with Central Attack, they still continue to use
the Protocol and viewed the “attacks” as a learning experience. In addition, all of thoseinterviewed users that were subject to Central Attack were able to successfully resolve theproblem through transformation or other means.
6.6.2.1 Research
If an applicant is not familiar with the rules and formation of the Protocol it may be easy tocome to the conclusion that because one application is necessary for many countries,
significant prior art research is unnecessary. However, because the Protocol does not create
an official “international” application but instead facilitates the easy processing of manynational applications, the degree of research required is therefore the same as it would be formany direct national applications. Because the nature of Protocol applications is laid out
clearly in the rules and regulations, and also because applicants in general are aware of theimportance of research, it is rare that an international application would be made throughthe Protocol without any prior research. In fact, out of those interviewed for this report, not asingle applicant indicated that no research was carried out. Most interviewed users said that
research was the most important part of an application, and all of them stated that they put asignificant amount of resources into ensuring that enough research is done.
6.6.2.2 Transliteration
Many Protocol applications coming from Japan have a basic application that is written in
one of Japan’s three official writing scripts – Kanji (Chinese characters), hiragana (aphonetic script), or katakana (a phonetic script primarily used for loan words). When theseholders and/or applicants make a Protocol application on this basis, some interviewed users
stated that they take into significant consideration how it will be transliterated. Once the!

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transliteration has been decided on, they carry out their research both for the original
Japanese application or registration domestically and the transliterated form for all othercountries. Because the transliteration is more often than not simply Japanese in the target
script, it is generally a rare case for the same word(s) to be registered as a trademark in acountry other than Japan. Many transliterated marks are not for the domestic market,59
therefore the risk that another entity has already registered the mark is low, whichcorrespondingly reduces the risk of central attack. Transliteration of a mark has an added
benefit in that there will also be a relatively low risk of refusal in designated countries. This isbecause there are a limited number of applications coming from Japan consisting oftransliterated Japanese words, which means there is a low likelihood a mark would alreadybe in use in a designated country.
6.6.2.3 Transformation
Generally considered to be a last resort option, transformation does allow the mark to be
successfully registered but also entails additional paperwork and fees.60 In addition, thebenefits of the Protocol are lost, as now numerous applications, fees, and renewal dates must
be managed instead of a single Protocol application. Because transformation is a rather
expensive undertaking, SMEs might find transforming a Protocol application to beprohibitively expensive. At the same time, if transformation is regularly required it will posea financial challenge to both large and small entities. A few interviewed users stated theirlimited use of the Protocol was because they did not want to have any risk of Central Attack
and bear the cost of transformation. Notwithstanding, transformation brings with it animportant feature: maintenance of the registration date. This saves considerable time as
opposed to stopping the Protocol application entirely and making national applications
independently. Out of those interviewed for this report that were concerned about Central
Attack, all stated that transformation essentially negated the risk and it is in fact somethingusers can rely upon to reduce the impact of a successful Central Attack. Out of thoseinterviewed users that experienced a Central Attack, most were able to successfully use thetransformation provision.
6.6.2.4 Marks with no Verbal Elements
A number of interviewed users stated that because marks with no verbal elements are notbased on a language, an even greater amount of research and development is put into theircreation to ensure the mark’s uniqueness. As a result, the risk of Central Attack is all but
completely mitigated, as it is much easier to find similarities between graphical marks than it
is with verbal marks, whether or not they have been transliterated. In addition, countries
with written languages based on pictographs have an added advantage, as they can take thesame mark that they have applied for and/or registered in their home country and use it as abasic application for the Protocol but simply omit any transliteration. Using marks with noverbal elements for basic applications is a tactic that a number of users in Japan have
utilized to successfully mitigate any risk of Central Attack even further and has proven to beeffective, especially when the mark contains no text or the text is in a script that must betransliterated.
6.6.3 Fear 3: The Protocol is Too Difficult and Costly to Use
The language barrier, unfamiliarity with numerous forms and procedures, and an entirely
new set of rules and regulations to learn, among others, fueled speculation and concern as to!

17!

the ease of use of the Protocol. Many users realized that continued use of representatives
could mitigate these concerns, but doing so, they surmised, would negate the cost benefit of
the Protocol. Therefore even though 90% of users stated that they wanted Japan to accede to
the Protocol and 85% stated that they would utilize it, official accession was met with sometrepidation. After eleven years of accession, however, the interviews conducted for thisreport yielded results that prove that the Protocol is neither too difficult nor too costly to use.
Table 3 - Initial Degree of Protocol Difficulty
among Interviewed Users and Representatives

Regarding costs, while nearly every
interviewee recognized that Protocol
Moderate
33%
applications were on average 30-70%
cheaper than going the national route
Minimal + Moderate 85%
and can save users up to 90% in(52% + 33%)
application and management costs,
Significant
15%
some of these same interviewees also
said that the many additional
Moderate + Significant 48%
procedures associated with a Protocol(33% + 15%)
application negated the cost savings.
Each follow-up action requires the payment of various fees, not to mention the humanresource costs due to the time required. In addition, some interviewed users have stated thecomplexity involved with different legal frameworks in target markets has led them toabstain from using the Protocol.61 However, overall interviewed users stated that such cases
are rare. Japanese users therefore tend to only use the Protocol when they are certain of thecost benefit.62
Minimal52%

While some interviewed users have experienced increased costs due to application errors,
most of them explained that it was because either they were still not used to the Protocol orthere was an error due to a language problem. These costs were largely mitigated as users got
used to the Protocol’s rules, regulations, and application procedures. Furthermore, theseinterviewees stated that the use of representatives does not completely negate the costbenefits that an in-house Protocol application can bring.63 There are also aspects after the
initial application that can decrease the overall cost. For example, as opposed to national
applications, designating additional countries in a Protocol application requires a check of abox and payment of the appropriate fees (one fee for each additional designated country).
Indeed, some interviewed users have stated that this is one of the fundamental reasons foruse of the Protocol.
Particularly difficult was learning what to do in certain situations – such as using the correctclassification – and how to respond to notices from the IB. Called Irregularity Notices, someinterviewed users stated that they held up the application process. In addition, a few
interviewed users stated that they receive many more notices and other correspondence that
requires attention from the IB than they would receive from a traditional national
application, and some complained that in many cases they are unsure of the appropriate
response. As a result, most of the aforementioned interviewees (which represent a few of allinterviewed users) explained that this somewhat negates the ease of use of the Protocol.
However, interviewed users were able to quickly solve any problems either through theirown know-how or by contacting the JPO or the IB at WIPO for assistance.

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Yet another concern raised by over half of interviewed users is the classification of goods andservices. Although the Protocol requires one application for many countries, this does notmean that there is one governing legal body. The Madrid System is governed by the“International Classification of Goods and Services for the Purposes of the Registrations ofMarks” (the Nice Classification), and interviewed users pointed out three major challenges
with this. First, while the classifications are
the same for each member country of the
Nice Classification, there are exceptions to
its interpretation in many countries, which
can lead to a delay in the registration of amark. Second, different classifications may
be required for the Protocol application
than were for the basic application. For
example, a good may be classified only
Figure 5 - Major Difficulties Faced by Interviewed Users
under Classification 1 in a basic application
or registration in Japan, but in another country it may require classification underClassifications 4, 18, and 31, which could translate into more work. Lastly, it is possible foran applicant to select indications of goods and services that are not listed in the NiceClassification. If an applicant chooses to do this and has not correctly classified these goods
and services in accordance with the Nice Classification, the application will be held up andan Irregularity Letter will be issued.
Table 4 – Interviewed Companies that Incurred Time Costs

Use Representatives

Do Not Use Representatives

A few applications or 6 months or less

59%

A few applications or 6 months or less0%

Many applications or 6 months or
more

41%

Many applications or 6 months or
more

100%

For interviewed users, the overall difficulty of making an application abroad through theProtocol has not increased. In general, a majority of interviewed users said that they wereable to get used to the Protocol after making a few applications, and that this took between a
few weeks to one or two months at most.64 Data obtained from the interviews, as represented
in Table 4, shows that the length of time required (represented as time costs) to get used tolearn how to make a Protocol application isdifferent for those companies that use
representatives compared to those that do not use
representatives.

Figure 6 - Interviewed Companies thathave the HR Capacity to Make Protocol
Applications without Representatives!

The above results are dependent upon a numberof variables, the first of which is the available
human resources (HR). As illustrated in Figure 6,
without the HR capacity, it is difficult to stop
utilizing the services of representatives. Second, anumber of interviewed users prepare the initial
Protocol application, conduct research, anddecide on the classification, among other things,

19!

and then forward the application to their representative for submission. These steps are,according to many interviewed users, much easier in general than the steps required formany national applications, and because their representative then deals with all of therequired follow-up procedures, the user is not burdened with any Irregularity Notices orother official correspondence. Therefore most of interviewed companies who rely on
representatives stated that the Protocol was an easy method to use, even if there is a learning
curve. If, however, as illustrated in Table 5, a representative is not used, the learning curve
will take longer which in effect increases the difficulty of using the Protocol. Even so, manyof those interviewed users that do not rely on a representative said that the Protocol is aneasy method to use. Once the initial learning curve was overcome, most interviewed users
said that making a Protocol application was not a difficult process.
Table 5 - Protocol Applications Compared to Direct National Applications
Interviewed companies that use
Representatives(85% of Interviewed Users)

Interviewed companies that do not use
Representatives(15% of Interviewed Users)

To Learn How to Use the Protocol

To Learn How to Use the Protocol

Easy

81%

Easy

75%

Difficult19%

Difficult25%

To Make a Protocol Application

To Make a Protocol Application

Easier70%

Easier75%

More Difficult

30%

More Difficult

25%

To Manage a Protocol Application

To Manage a Protocol Application

Easier or no Difference

82%

Easier or No Difference

50%

More Difficult

18%

More Difficult50%!
As for difficulties surrounding classification, this was brought up by over half of theinterviewed users. However, while some of them stated that more research was required onlyin certain instances than before the Protocol, a few concluded that it actually made a
Protocol application more difficult overall than many national applications. The interviewed
users that raised these concerns also pointed out that a similar, if not greater, amount ofresearch is required for direct national applications because in some cases a national
application may be under more scrutiny because many countries do not use the NiceClassification and have broader or narrower classification interpretations. 65 A Protocol
application allows the applicant to enjoy the overlapping commonality of the NiceClassification, with additional research only required were differences emerge.66 The lastvariable is the frequency of Protocol applications. A few interviewed users stated that theyexperienced difficulty making and managing Protocol applications because of infrequent use.
Interviews with members of the JPO who were involved in the implementation of theProtocol in Japan provided the perspective of the government. Regarding costs, the JPO!

20!

stated that there were none involved that were so great that it would result in Japan not
acceding to the Protocol. The most expensive costs were the implementation of a computer
system to handle communications with the IB and Protocol applications. At the time (19971999), the JPO’s system was predominantly paper-based, but WIPO and the IB were fast
moving to the digital age. The JPO was also in the process of computerizing its system, but it
did not have the Protocol in mind when this initiative started. Structures therefore needed to
be implemented in the new system to handle the Protocol, and while of course the JPO
incurred costs for this, overall it was not prohibitively expensive.67
As in any new system there is a learning curve, but most interviewed users stated that this issomething that can be easily overcome. When asked what the major advantages of theProtocol are, most stated that ease of use was in the top three. Even taking potential
challenges into account, the Protocol is by and large a much cheaper method forinternational registration, with nearly every interviewed user stating that it is the number
one advantage of the Protocol and over half saying that money was saved through its use.
Table 6 - Major Classification Issues Brought up by Interviewees

Interviewed Companies and Representatives:

Yes

No

Are of the view that classification problems can occur

52%

48%

That actually experienced classification problems

45%

55%

That found more research was required to solve these problems

33%

67%

That found the time to registration of a Protocol application became
longer as a result

30%

70%

Of the view that classification problems make a Protocol application
more difficult overall

24%

76%

7. Advantages and Disadvantages
7.1 Advantages for the Government and JPO
7.1.1 Revenue Creation
Countries that are designated in international applications enjoy a proportionate share of theamounts received from the supplementary and complementary fees, but can also opt forindividual fees.68 Japan has opted to collect individual fees payable in two parts, the first
before the international registration and the second after the examiner’s decision or after a
judicial decision has been made and the trademark is to be registered. Individual fees havehelped the JPO take in more revenue while making international trademark registrations
cheaper.
7.1.2 No Formality Checks
Under the Protocol, all formalities surrounding the examination, classification and checking
the lists of goods and services, assignment of a filing date, renewals, and maintenance of!

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records is taken care of by the IB at WIPO. This can therefore help ease the workload ofnational trademark offices when it comes to procedural requirements for an application
and/or registration and issuance of registration certificates to applicants.
7.2 Advantages for Companies, Representatives and other Users
7.2.1 One Application
Unlike filing direct national applications, Protocol applications require one application in
one language and one fee in a single currency. One application also means that changes to an
application can all be easily completed through a single procedural step that updates theinformation in the International Register. The Protocol also allows for any desired changes
or the registration transfer to apply to some of the designated Contracting Parties or goods
or services.
7.2.2 Quicker Registration
When an applicant makes an application under the Protocol, they can know for sure that in
no more than eighteen months the examination process will be concluded and that, provided
there was no opposition, their trademark will be registered in all of the designatedContracting Parties. 69 Interviewed users highlighted two advantages in particular: theknowledge that the application process will be completed in a timely and pre-determinedfashion; and the peace of mind that, provided there was no opposition, they can use theirtrademarks in no later than eighteen months. Some interviewed users stated that theseadvantages played a major role in the decision process regarding usage of the Protocol.
Moreover, these interviewees found the Protocol helped them keep on their product and/or
service release schedule. Because of this, these interviewees were able to protect their marksin new markets, particularly those that traditionally had long examination periods.
7.2.3 Subsequent Designation
Under the Protocol, users can simply extend an existing application to another Contracting
Party by filing a subsequent designation. This makes it very easy and efficient for a user toexpand the scope of their business. Furthermore, a subsequent designation can be made to aContracting Party that was not party to the Agreement or Protocol at the time of theinternational application, expanding even further the number of possible target countries.
7.2.4 Cost-Effective
Among those interviewed for this study, all expressly stated that the affordable nature of theProtocol is one of the underlying reasons why it is used in place of direct national
applications. Since the Protocol includes intergovernmental members, an applicant candesignate, for example, the EU and thus cover all EU countries in one designation, which is amuch cheaper option as opposed to filing direct national applications in each EU country.
Users may also file Protocol applications without representation. A few interviewed users
said that the ability to do so translated into significant cost savings. Moreover,representation abroad is not always required, providing even more savings. The Protocol’s
simple amendment procedure and easy online renewal system (one renewal for all
designated countries) also ensures that it remains a cost-effective option.

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7.2.5 Easier Management
Most interviewed users stressed that the management of a multitude of different renewal
dates, fees, laws, rules, and opposition histories can be difficult, confusing, and almost
always time consuming. A number of interviewed users noted that their registrations were at
risk of cancellation due to non-renewal or other factors because of inadequate HR andmanagement systems. Some interviewed users even developed elaborate in-housemanagement systems that, while effective, were far from ideal. Over half of interviewed users
stated that the centralized nature of the Protocol resulted in easy management and thesaving of time, money, and frustration.
7.2.7 Transformation
The Protocol mitigates the risk of Central Attack by allowing an international registration to
be transformed into a national or regional application if it is cancelled at the request of the
Office of origin during the five-year dependency period. Transformation must take place
within three months of the cancellation. Among interviewed users, nearly half stated thattransformation mitigates the risk of Central Attack, and most of those that experienced aCentral Attack successfully used transformation.
7.2.8 Facilitating Investment
The harmonized system of international trademark registration that the Protocol provides
helps facilitate investment both abroad and at home. It has been of particular advantage toJapanese companies that wish to either enter the international market for the first time orstrengthen their presence abroad, and has also been helpful for Japanese SMEs andcompanies that have numerous production facilities in different countries. The Protocol also
creates a climate that is favorable to investment from abroad. In fact, nearly every
interviewed user stated that if more countries were members of the Protocol – specifically inSoutheast Asia – they would make more Protocol registrations and thus increase theirpresence in those respective countries.
7.3 Disadvantages for Users
7.3.1 Language
Under the Agreement, the sole working language is French. The Protocol changed this andintroduced three working languages: French, Spanish, or English. However, even though
English is now an option, the language issue is still pervasive and was raised by over half ofinterviewed companies and representatives, as they would prefer Japanese to be an official
working language. Having three official working languages has also brought concerns. Someinterviewed users stated that while they successfully completed and filed their application in
English, difficulties arose when correspondence arrived in French or Spanish, in which theircapacity was limited. Language difficulties were an underlying reason for why someinterviewed users continue to use representatives, while others stated that they would either
not use representatives or seriously consider not using them if the language issues wereresolved.

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7.3.2 Limited Membership
As of early 2012 the Protocol has 84 members,70 and among them are some of the largest
markets in the world in North America, Europe, and Asia. However, there are large portionsof the world that are missing, notably in South America, Africa, Southeast Asia, and the
Middle East.71 Some of those interviewed for this study stated that this was a contributing
factor to not use the Protocol, and as previously mentioned nearly all said that they would
use the Protocol more if it had more members, with the Southeast Asian region highlighted
as the most important, South America as second, and Africa as third.
7.3.4 Central Attack
An international application under the Protocol is dependent on either a national application
or registration on which it is based for five years, and this can be a disadvantage because it
gives way to the possibility of what is known as “Central Attack.” If at any time during thefive-year period the basic application is cancelled, renounced, revoked, invalidated, lapses,or is rejected or withdrawn, the protection resulting from the Protocol application isrevoked.72 However, if a basic application is not subject to a Central Attack after the first five
years, the international registration becomes independent of the basic application, provided
that no adverse action taken during the five-year period could still result in the cancellationof the national registration after the five-year period has expired. In addition, if aninternational registration is cancelled the applicant has the option to transform it into
national applications in the designated countries, maintaining the priority date of theoriginal international registration. A few interviewed users experienced Central Attack, andmost are of the view that with transformation and proper research, there will be almost norisk.
7.3.5 Mark Amendment Restrictions
Under the Protocol, there is no provision that allows a holder to change the mark in an
application, registration, or renewal. In the case of Japanese users, most of them expressed
their dissatisfaction that language issues create a situation in which amendment of certain
marks becomes challenging or impossible. Among these interviewees, a few stated that theychose to abstain from or limit their use of the Protocol, while nearly half stated that theychose to use the Protocol only for major corporate brands and went the national route forother marks, including for those marks that have a short lifespan.
7.3.7 Potential Additional Costs
The Protocol brings potential additional costs, such as when a Central Attack is successful(thus losing the one fee advantage) or when responding to official actions from a designatedcountry. Furthermore, if a significant number of oppositions are filed, maintenance of a
Protocol registration may actually become more costly. In Japan, most interviewed users
also secure the services of local representatives in designated countries to avoid such issues
and advise on local issues and risks such as Central Attack. While it is an additional cost,nearly all of them stated that it was worth it and that in the end using the Protocol is still amore cost-effective option.

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7.3.8 No Clear International Definition of Goods and Services
Each member state of the Protocol has its own definitions and interpretations of goods andservices, and this means that what is acceptable for one country may not be acceptable foranother. Among the interviewed users, over half stated that this was a concern, which isvalidated by the fact that most cases of provisional refusal under the Protocol are based on
issues surrounding various interpretations of goods and services classifications among themember states.73
7.4 Disadvantages for the Government
7.4.1 Increased Workload
Because international applications under the Protocol are filed through the Office of Origin,and it is also this office that handles those applications that are designating the Office ofOrigin, there is the potential for an increase in workload. There is also the possibility thatcosts will be incurred by creating additional sections, training staff, and publishing newmaterials related to educating users on the Protocol, among others. The considerable steps
Japan took described in Section 5 to implement the Protocol required an equal portion of
resources, and the workload was initially increased to a minor extent.
7.5 Disadvantages for Representatives
7.5.1 Risk of Fewer Clients
Because a user can make an application without representation,74 there is the risk that
representatives may lose clients, which could cause a drop in revenue and loss of jobs. For
those representatives that rely on international applications both from Japanese applicantsand from applicants abroad for a large portion of their business, it is clear that they face agreater risk to their overall job security than do applicants.
7.5.2 Language
In general in Japan, the research for this report has found that representatives tend to havegreater linguistic capacity than applicants themselves, and this is one of the fundamental
reasons why Japanese applicants continue to use the services of representatives for Protocol
applications.75 Even so, interviewed representatives explained that they still face similar
language issues as applicants. Furthermore, because they are generally expected to work
effectively in any of the official languages, some have incurred costs to train or hire theappropriate personnel to make up for any insufficiencies.
7.5.3 New Management Systems Required
Because Japanese users tend to rely on representatives, the necessity of new management
systems does hold a potential disadvantage. For example, one interviewed representative
explained that while they implemented a new management system, it was only to manage
Protocol renewals because their representative managed all other aspects of theirapplications and registrations.76 Conversely, another representative explained that their new
management system was much more comprehensive and took more time and cost to
implement.77!

25!

7.6 Examples of Overcoming Disadvantages
7.6.1 The Government
Developing the structures to communicate with the IB and a complementing electronic
management system represented one of the JPO’s most substantial challenges. Japan’s
accession to the Protocol came at a fortuitous time, however, as the Internet and electronic
communication was already becoming ubiquitous in the country. The JPO developed anadvanced computer system that not only handled all Protocol applications appropriately, but
could also be used to internally manage these applications and successfully communicate all
relevant information to the IB. The implementation of this new computer system on theorganizational level was essential, as international trademark applications made under the
Madrid Protocol are made under national trademark jurisdiction first, and then sent to the
IB for the international portion of the process. Even though the cost of this new system wasin the millions of Japanese Yen (tens of thousands of US dollars) and did take some months
of intensive work to get everything up and running in preparation for accession,78 the timingof it fit well into the JPO’s overall organizational plans, which minimized the cost incurred.79
7.6.2 Applicants and Registration Holders
Consider the case of an applicant that has experienced Central Attack on multiple occasions.
When questioned as to why they experienced it so many times, the applicant stated that they
were not completely sure. This applicant performed their research, due diligence, andapplication procedures to the same extent as they had always done and found no major cause
for concern. Despite this uniform and detailed attention to their international applications,the user experienced Central Attack on numerous occasions. However, the user stressed thateven though a number of its applications were subjected to Central Attack, it will continue to
use the Protocol because an application can be easily transformed and the overall benefits of
the Protocol far outweigh the risks.
For our second example we shall take a look at an applicant that was adversely affected due
to a Central Attack. After developing a new mark for an innovative product, the applicant
used a subsidiary abroad to make a basic application. Once the basic application was made a
Protocol application quickly followed and the applicant was well on their way to be able touse the mark within their planned timeframe. However, it turned out that the basic
application was not accepted by that country’s trademark office, and as a result was refused.
With no basic application, the Protocol application was accordingly refused and/or canceledin all designated countries. However, the transformation option was available, and after
considering all other possibilities, the applicant chose to avail itself of this provision. The
mark was therefore successfully registered in all other countries besides the country that thebasic application was made in, and because the original application date of the international
application still applied, the applicant was able to follow its original business plans with aminimal delay.

8. Results of Implementation
8.1 Specific Examples among Each Group
Each group of interviewee (the government, applicants and trademark holders, andrepresentatives) has experienced similar and different results that had both positive andnegative repercussions.
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8.1.1 The Government
8.1.1.1 Internationalization of the JPO
Accession to the Protocol brought with it a true sense of internationalization and changed
the culture in the JPO somewhat, as many within the office were excited and motivated to bea part of the harmonization of Japan’s trademark laws with the international system. An
equally high number became motivated to learn English. Prior to the Protocol, most
examiners and JPO staff would deal only in Japanese through domestic agents andtrademark lawyers, even if the application came from abroad. With the Protocol, however,
JPO staff now had the opportunity to communicate directly with WIPO in English. Becauseof the nature of Japanese governmental offices, staff are frequently rotated to new sections
after a number of years, and therefore people were not sure if they would go to the Protocol
sections or not. As a result, many took the initiative to utilize the new and existing English
specialists at the JPO to improve their written and communication skills with a view toincreasing their chances of being transferred to one of the new sections. This had an overall
positive impact on the JPO, as not only did staff learn new skills and improve existing ones,
but it also ushered in an exciting time of new, interesting work, strong satisfaction levels
among staff, and a true sense of internationalization.80
8.1.1.2 Digital Implementation
An important part of the JPO’s digital portfolio is the Industrial Property Digital Library(IPDL), which was launched in 1999 to coincide with Protocol accession. The IPDL is asearchable database that contains detailed information (in Japanese and English) on over six
billion official IP documents that have been published since 1885, including domestic andProtocol trademarks. For each entry, the legal status of the application, registration, and any
appeal information is also provided. In addition, the JPO created an online learning program
called the “Outline of Procedures for Madrid Protocol Applications,” which is a free learning
tool that is available at any time for users, agents, lawyers, students, and others in the IP
field. The JPO also installed personal computers (PCs) at its branch offices nationwide forpublic use. With these PCs, users can complete electronic applications, edit necessary
documents, and conduct research. Not only do these PCs help those who do not have thenecessary equipment or Internet connection, but they also enable more efficient operations
as it reduces the amount of paper-based applications, is faster, and much more accurate.
8.1.1.2 Increased Support for SMEs
Apart from multinational Japanese corporations, there are large numbers of SMEs who arepoised to gain substantial advantages through the accession of the Protocol. Traditionally,
SMEs have played a large part in the Japanese economy (SMEs account for 99.7% of allenterprises and 70% of all jobs in Japan81), and therefore the Japanese government has
implemented a comprehensive program to help SMEs make the most of the Protocol.82 Muchof this support comes through seminars and introductory informational sessions targeting
SMEs and conducted by JPO trademark and Protocol specialists. These seminars and otherevents are either launched at the impetus of the JPO or by request from a group of SMEs or
related organization.83 The JPO specialists also visit the SMEs individually and provide freeconsultation on the Protocol to raise awareness, support its use, and help foster increased
knowledge and thus developing the skills of the IP sections of the individual SMEs. In!

27!

addition, the JPO provides consultation services on the IP systems of other countries, as theProtocol provides SMEs with an opportunity to expand their market reach.
Throughout Japan there are also local patent offices at the Regional Bureau of Economy,
Trade and Industry, and these offices help facilitate various kinds of support. Each regional
office offers regular consultation services covering the entire process of a Protocol
application. INPIT also offers similar consultation services that cover all types of inquiries
from users in person, through e-mail, or by telephone.
8.1.2 Applicants, Trademark Holders, and Representatives
8.1.2.1 New Management Systems Advantageous
Through their experience with using the Protocol, many interviewed users have found their
new management systems to be advantageous. Let us consider, for example, interviewee A(called “IA” for the purposes of our example), who decided to start using the Protocol shortly
after Japan acceded. 84 Once IA made this decision, they realized that they needed to
implement a new computer system to make and manage all Protocol applications. Although
this took time and HR, because this new system is essentially a new set of rules (such as
making applications electronically) and the creation or procurement of new software formanaging applications and communicating with the IB, little, if any, new physical equipment
was required. IA stated that although implementation of this new system took place over a
few hectic months, it had lasting positive repercussions as it introduced a new system that
could be used in other areas of its entire trademark management strategy. This saved IA asignificant amount of money in the following years, as it became much cheaper to manage its
trademark portfolio. IA’s experience is just one example: other interviewed users relayed
similar stories in that they learned that starting to use the Protocol when they did facilitatedthe implementation of new systems which stimulated a significant overall cost savings.
When it comes to representatives, the most important concern tends to be focused on
potential job losses. We shall briefly examine another example of how a representative –Number One Trademark Firm (N1, a fictitious name for privacy concerns) overcame thedifficulty in implementing a new management system for the Protocol. Following Japan’s
accession to the Protocol, N1 developed a new electronic management system for managing
Protocol applications and registrations. Although N1 explained that they did have a numberof concerns over the success of the new system, it assembled an in-house team of ten
computer and trademark specialists and developed the system in approximately six months.
Because this was all done in-house with existing staff and resources, there were no necessary
additional costs. For the first eighteen months following Japan’s Protocol accession, N1 was
not sure how its new system would work because it had yet to receive any official
correspondence or registrations from the IB to put it to the test. During this time the firm
experienced some uncertainties in how entries and various details would be made into their
new system. While this caused some difficulties, after this time period lapsed and following a
few applications, N1 was able to successfully harmonize its new system with therequirements of the Protocol and the IB. Once this was achieved, the firm explained, there
was minimal work required and few, if any, problems. Furthermore, the new system ismanaged by a specific group in their in-house IT department, which sends the trademark
team reminders and other vital information related to their clients’ Protocol application andregistrations. This has proven very beneficial and allowed N1’s system to be successful
despite an initial challenging period. Moreover, N1 stated that it believes because the IB and!

28!

WIPO have even more support features and capability than it did when Japan first acceded,
new Protocol members will not face the same degree of difficulty when they implement theirown computer management system.
8.1.2.2 Central Attack Resolved
Although there is always a risk of Central Attack, interviewed users have been able to resolve
this risk without any significant problems. One interviewed company was in danger ofexperiencing a central attack when they started due diligence for a Protocol application. The
basic application was already registered in Japan, but the interviewee’s research turned up
another entity that had made a nearly identical application. This information saved theinterviewee from a potentially costly and time-consuming central attack process, and theinterviewee stressed that this was an example of the importance of effective and thoroughresearch. As long as extensive research and prior art searches are conducted in Japan andabroad before a Protocol application is made, the interviewee said, the risk of central attack
is low or almost non-existent. A number of other interviewed users had similar
circumstances in which there would have been a greater risk of central attack if proper
research was not conducted.85
8.1.2.3 Non-Japanese Basic Application Saves Money and Time
A feature of the Protocol that makes it more attractive than the Agreement is the ability to
use a non-Japanese application as the basic application. One interviewee with most of theiroperations outside of Japan (though they are based in Japan) found this useful. The
company’s products are mainly targeted for international markets and many are not evensold domestically.86 The company explained that an international application based on anational Japanese application would, therefore, make little sense. Under the Protocol, thecompany could instead make a basic application in another country in which it has a realbusiness presence. This allowed it to protect its mark more quickly and negated the need foran additional basic application in Japan, which could be at risk of ultimate cancellation for
non-use due to the mark’s orientation to a non-Japanese market. Some interviewed
companies have stated that this is an important strategic advantage of the Protocol for theirbusiness.
8.1.2.4 An Inopportune Case for a Protocol Application
As we have previously discussed, unique circumstances mean that a Protocol application
may not always be the most advantageous route. Let us take one interviewee as an example(names of both the company and countries have been changed for privacy concerns). This
user – called “Hoshi” for the purposes of this example – has a large, extremely autonomous
subsidiary in “Country A” in Europe (called “Hoshi – Country A” for the purposes of thisexample). Although the final say rests at Hoshi’s headquarters in Tokyo, Hoshi – Country A
develops new prototypes, manages its own finances, conducts research and development(R&D), and also handles all of the trademarks for the products that it sells in the region. If
Hoshi releases a new product in Japan called “Product A,” but Hoshi – Country A
determines that it would sell better in the European market if it were called “Product B,” andif headquarters in Tokyo then approves this name for the European market it will be Hoshi –Country A’s responsibility to autonomously apply for the appropriate trademarks. Because
the new product will be sold under the “Product B” label in Europe, it does not make sense!

29!

for Hoshi – Country A to make a Protocol application, as it can instead easily make a CTM
application.
8.1.2.5 A Long Road to Registration
The Protocol provides an extremely easy and cost-effective means to secure trademark rights
abroad; however it may not always be the fastest. One interviewed user explained theirpleasure at Japan’s accession to the Protocol and the ability to make applications in English.
Learning the ins and outs of the Protocol took a few months, but they felt that they were able
to successfully complete all of the necessary forms and procedures in English. However, theirapplication was returned to them due to errors resulting from an unclear understanding ofcertain aspects of the application and language mistakes. This made their application takelonger and meant that their related product(s) had to be put on hold until the application
problems could be resolved.

9. Lessons Learned
Over the past eleven years, users, lawyers, agents, and the government in Japan have learned
many lessons about the Protocol. The number of lessons learned expressed by theinterviewees for this study is too great to go into detail on every one, therefore we shall focus
on the most frequently cited, meaningful, and relevant lessons learned among interviewees.
9.1 Cost-Effective from an Application and Management Standpoint
Every user interviewed for this report learned that the Protocol is a cost-effective choice fromboth the application and management standpoint. Because one application is required formany countries, most interviewed users found that the application process under theProtocol could be from 1/3 to 1/2 cheaper than taking the national route. This extends
beyond the initial application, as every interviewee said that all facets of the Protocol arecheaper in general (by up to 70%), and most found the Protocol be cheaper regardless of any
subsequent action required while some stated that it is cheaper than other options provided
everything goes smoothly.
Of those interviewed users that have had direct experience with Protocol registration
renewals, over half of them found a Protocol renewal easier to manage than many national
renewals. For the remaining interviewed users that have yet to experience Protocol
registration renewal, all recognized that the benefits would manifest as their registrations
come up for renewal in the coming years. Beyond renewals, nearly half of the interviewed
users said that they learned that the centralized nature of the Madrid System has helped
them overcome any human error when it comes to trademark management, as it is easy tokeep up with dates, changes and new requirements for many countries through one
application. Furthermore, one refusal period for all designated countries means that it iseasier for an applicant to manage the goods and services associated with the registration, as
the trademark(s) will be ready for use.87 Easy management therefore translates into morecost-savings, and over half of the interviewed users confirmed that this is the case.
Intimately related to the application and management process is language, and someinterviewed users explained that the ability to make a Protocol application in English
reduces the required overall costs compared to national applications. These interviewees
explained that when they make national applications, language concerns require them tospend financial resources on in-house training, hire a third party consultant, or rely on a!

30!

number of different representatives to assist them. However, when these same interviewees
used the Protocol, they already had the necessary language skills. For those interviewed
users that did not, most used Japanese representatives to assist with Protocol applications,
including help with any language issues, which nearly half of these interviewees explained
was the primary reason for using representatives. At first glance, one may think that using a
representative for Protocol applications negates one of the most important cost benefits.
However, when a cost-benefit analysis for using the Protocol is undertaken, an importantvariable must be taken into consideration regarding Japanese users: they use representatives
for international trademark applications, regardless of the application route taken. 88
Therefore regardless of the application route, the applicant will incur fees from theirrepresentative(s).
Beyond the use of Japanese representatives there is the issue of the use of local
representatives. When the national route is taken, over half of interviewed users stated thatthey also used a local representative, while the remaining stated that their use of a local
representative is in coordination with their use of a Japanese representative regardless of theapplication route. In the case of the latter interviewed users, double fees are incurred (onefee for the local representative and another for the Japanese representative) whenever a
trademark application is made abroad. However, if a Protocol application is made, anapplicant is not always required to secure the services of a representative in the designatedcountry. This can result in even more cost savings. In addition, less time and effort isrequired by its Japanese representation to make the Protocol application, which then brings
in further savings.
9.2 The Protocol is Only Cost-Effective if Many Countries are DesignatedAlthough the cost-effective natureof the Protocol is not in doubt, overhalf of interviewed users felt that
there are some cases in which the
Madrid System is only cost-effective
if many countries are designated.
Indeed, perhaps the largest merit of
the Protocol is that an applicant cancheaply designate many countries,
not only a few. It is important for us
to now ask the question: how manyis “many”? When asked what
Figure 7 - Number of Countries Designated Among
constitutes many countries, each
Interviewed Companies
interviewee had a different response.
Some stated that the Protocol was
only useful if twenty or more countries were designated, while others said that the Protocol
would be used when designating as few as three countries (see Figure 7). Nearly half ofinterviewed companies have no rule set in stone but instead take a case-by-case approach,while some were of the opinion that, through their experience, the Protocol is only costeffective if ten or more countries are designated. A few were on the opposite spectrum, as
they learned that the Protocol is cheaper if three or fewer countries are designated. The mostcommon opinion among interviewed companies was that the cost-effective nature of theProtocol comes into play when five to ten countries are designated.! Adding! interviewed!

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representatives into the equation brings the total to nearly half of all interviewed users.
Among the interviewed users who have a rule on the cost-effective use of the Protocol, eachhas a different perspective as to how the word many is interpreted. However, all interviewed
users learned that the real value of the Protocol comes into play when many countries aredesignated, regardless if they have a specific rule or their individual interpretation of how
many is “many.”
9.3 A Protocol Application May Take More Time
One of the most important advantages of the Protocol often cited by interviewed users is thatit can be a fast process, with nearly half stating it is one of the reasons why they choose theProtocol. However, because all Protocol applications are processed at each country’s
respective IP office, the changes made to shorten the examination period for a Protocol
application tend to trickle down to the national level. Because many member countries haveradically increased their efficiency in processing national applications, some interviewed
users have limited or completely stopped designating certain countries in Protocol
applications.
Even though many countries have gotten faster overall in their national examinations, thisdoes not mean that national applications will always be faster. Each application is uniqueand must be taken on its own, and a number of external factors such as the complexity of themark, the number of classifications, and the associated designated products, all could
increase the time it takes for a national application to be registered. The examination period
for a Protocol examination, however, must be completed within eighteen months, and gives
the applicant a sense of security and the ability to easily plan ahead. Some interviewed users
stated that these were two important benefits of the Protocol in regards to the speed of theprocessing of an international application.
Depending on the industry, the speed at which the examination period is completed may or
may not matter. Eighteen months is more than an adequate time period for many users incertain industries with slower mark life cycles. Of those interviewed for this report, moststated that they feel the Protocol is fast enough and that any insufficiency in speed is not the
major factor in their decision making process regarding application routes.
9.4 Language Concerns Mean a Basic Registration should be used Instead of a Basic
Application
A common theme among the opinions of interviewees was the issue of language and how it
relates to the basic application. Over half of interviewed users ran into language difficulties,
and learned that it can be an uphill battle to use a Japanese application or registration as thebasis for a Protocol application. These difficulties arise from the language, as nearly half of
the interviewed users explained that Japanese applications made in one of the three
Japanese writing scripts (Table 7) are frequently rejected or unsuitable to use as a Protocol
application. While an international application under the Protocol can be accepted for amark written in Japanese, each member state has its own laws that must be respected, andnot all accept applications in scripts such as Japanese. As a result, many designatedcountries may refuse the application, which would undermine the benefits of the Protocol.
To overcome this problem, some interviewed users transliterate the concerned mark intoanother language (usually English) and make a new Japanese application. Although most!

32!

ran into no problems, some did find that this new application made just for the purposes ofmaking a Protocol application can bring in a host of other problems. First is the time, effort,
and cost involved with making a new Japanese application. Although it is a single application
and relatively straightforward, the resources required cannot be ignored when doing a costbenefit analysis for using the Protocol. Second, problems can arise from the transliteration,and if it is not completed correctly – or if the JPO does not accept the transliteration – it will
be returned to the applicant for correction and resubmission.89 Third, transliteration may
actually make it impossible to make a new Japanese application. If an Applicant A, forexample, transliterates a mark into English, it may find that Holder B has already registered
the transliterated mark, making a new basic application for Protocol purposes impossible.
There is also the issue of classifications, which over half of the interviewed users learned
further increases the difficulty of using a new Japanese application as the basic application
for the Protocol. In Japan, certain products overlap others in the national classification
scheme, and this can actually prohibit registration of a new mark. Some interviewed users
stated that they have learned that it is more difficult to use a new Japanese application as thebasic application for the Protocol, and that it is much easier, safer (less risk of Central
Attack),and
Table 7 - Japanese Writing Scripts
preferable to use aJapanese
ScriptExample Useregistration instead.
Kanji(Chinese 漢字
Nouns, Adjective Stems, Verb Furthermore, if an
Characters)
Stems
insufficient amountresearch
andHiragana
Inflected
Verbs,
Adjective of
ひらがな
detailed
Endings, Particles, Words With
No Kanji, Difficult Words
consideration is done
andaJapanese
Katakana
Loan Words, Other Special-Use
カタカナapplication is used,
Words
using the Protocol
may end up costing more and taking more time as compared to the national route.90 Please
see Annex III, Section 2 for an example. Using a Japanese registration as the basic
registration, however, has never resulted in Central Attack or any other problems when aProtocol application was made,91 and nearly half of interviewed users stated that they feelthat this is a problem unique to Japan and other countries that use pictographic writing
scripts.
9.5 The Protocol May Not Be Effective for Short Lifecycle Products
For products and/or services with short lifecycles, some interviewed users stated that theylearned that the Protocol might not be an effective application route. Two major intertwined
factors underlie why this is so: industry and competition. Of the interviewed users, over half
are operating in industries that are in a near constant state of innovation, which comes fromentities such as research institutes, governmental institutions, and the industrial participants
themselves. Since the climate of these industries is so fluid, members have to develop new
products and services at a much faster rate than other industries. Over half of interviewed
users involved in commercial activities stated that they release products and/or services at amuch faster rate than the eighteen-month examination period of the Madrid System. For
such cases, by the time a Protocol application has been registered, it may no longer be of any
use to the applicant.

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Another reason why products and services with short lifecycles may not be suitable for theProtocol is that some interviewed users learned that many of them are simply not suitable
due to regional, linguistic and cultural issues. While it is not true for all industries, amonginterviewed users’ activities their products and services with short lifecycles tend to be very
focused on a specific culture, language, market, and/or group. 92 Language is also an
important issue, as what may be an easily recognizable and popular mark in one language
may prove to be just the opposite in another. Significant research, time, and cost would be
required to adapt the mark to a new language, and on a number of occasions someinterviewed users have learned that for short lifecycle products, such efforts might be
unsuccessful and not economically viable. As a result such products and services might not
be suited for any other region, which then lessens the advantages of the Protocol.
Furthermore, even if the product can be adapted for another region, language and culture,
not all countries in that region may be Protocol members.
Beyond the aforementioned reasons, short lifecycle products and services may simply not besuited for trademark protection in general. Some of the interviewed users with such products
and services said that this is the case. Even if the Protocol is used, it is simply too much of an
economic risk to constantly protect marks for products and/or services that will only bearound for a short time. Moreover, some interviewed users stated that they risk losing theircompetitive edge if they are always waiting to register a mark before they release a new
product or service. Protocol or otherwise, trademark registration is not always necessary
before a product or service is marketed.
9.6 Less Worry About Renewals and Other Deadlines
One of the most important features of the Protocol is easy renewal, which is due at the sametime for all designated countries and requires one easy-to-pay fee. This is a significant
advantage that was recognized by over half of the interviewed users, who have accordingly
become less worried about renewals. Secure in the knowledge the IB will send a renewal
notice at least six months in advance and that all designated countries will be renewed, any
uncertainty is eliminated. Moreover, these interviewees responded that less time worrying
about renewals means more time to focus on other activities such as combating trademark
infringement. Interviewed representatives explained that their clients will become more
mindful of the benefits of the Protocol renewal system, and therefore more inclined to use
the Protocol further.
Table 8 – Major Concerns of Renewing a Protocol Registration

Concern RaisedInterviewed Users

Ambiguity in deadlines, fees, correct procedures, etc.

< 10%

Laws and rules regarding renewals differ by member States< 5%Management of renewals under the Protocol is more difficult< 10%Over half of the interviewed users have learned that it is difficult, costly, and time consuming
to manage multiple renewal dates and constantly keep abreast of different laws, rules, andregulations. Furthermore, they stated that they have learned that the renewal system of the!

34!

Protocol dramatically reduces the burden of trademark management. As a result, most ofthese interviewees said that they already have plans, or are developing plans, to transition tousing the Protocol more. Most interviewed users explained that because renewal notices
and/or invoices for direct national applications come at such sporadic times, it can bedifficult to manage them. In a Protocol application, however, trademark holders know
exactly when they can expect to receive such correspondence, and nearly all of theinterviewed users stated that this transparency has helped them worry less and feel moresecure when it comes to renewals. Despite these advantages, a few interviewed users didraise some concerns over Protocol renewals, which are listed in Table 8.

Figure 9 – Interviewed Users that Feel Renewal ofProtocol Applications is Easier to Manage Overall

Figure 9 – Interviewed Users that Said the Ease ofRenewals Plays a Role in Future Protocol Use

9.7 The Protocol Is Ideal for Corporate Marks
In Japan, half of interviewed users have stated that they learned the Protocol is the ideal
application route for protecting corporate marks. This is due to the following factors:
1. The Protocol brings savings in time, money, and effort when an applicant wishes toprotect a mark in as many countries as possible;
2. The Protocol is fast, allowing for faster use of a mark and faster action against any
infringement;
3. Corporate marks have far less risk of Central Attack;4. Designating additional countries is easy and cost-effective in a Protocol application,
which can facilitate trademark registration in new countries;
5. Subsequent designation is simple and cost-effective; and6. Amending one Protocol application to reflect desired changes is easier and more costeffective than doing so individual in all of the countries where the corporate mark is
registered.
All of the aforementioned reasons are the result ofinterviewed users’ direct experiences, and becauseof the positive results, most expressed their desire
to transition from many national trademark
registrations to one Protocol application,
especially for corporate mark(s) that are still
protected by national registrations. Even if anapplicant’s desired countries cannot all be
designated, these interviewees have stated that it
Figure 10 - Ideal Use of the Protocol foris still beneficial to use a mix of national
Corporate Marks (Among All Interviewed
applications and the Protocol for those countries
Users)!

35!

!
that can be designated, as a good portion of the interviewed user’s target markets are
members of the Protocol. The Protocol is therefore ideal for corporate marks because anapplication is easy to make, manage, and change. It is also fast, can facilitate increasing thenumber of designated countries, and there is a low level of risk involved.
9.8 Determining the Correct Classification Can be Tricky
One recurring instance brought up by over half of the interviewed users is regarding theclassification system of the Madrid System, specifically as to how it is different than that ofeach Member state. While the Nice Classification is applicable to the Madrid System, it does
not override the national classification system of each member state. Each member state has
their own interpretation of what goods and services should be classified in what way, andalthough this aligns nicely in many cases with the Nice Classification, in many otherinstances it does not. As a result, some interviewed users stated that more research is
required to overcome classification issues and a few have learned that a Protocol application
might take more time and resources because of the difficulties in determining the correctclassification in designated countries.
Not only does an applicant need to consider that its basic application or registration meetsthe requirements of the Nice Classification, but it also needs to ensure that it meets therequirements of each classification system of each designated country. Indeed, nearly half of
the interviewed users have had difficulties with a Protocol application because of this. A
common theme among interviewed users’ experiences was that they learned that they often
had to add classifications to a basic application or registration or make an entirely new basic
application or registration to ensure classification compliance with WIPO and all designatedcountries. Such additional work was pointed out as somewhat negating the benefits of theProtocol, and was further exacerbated when language issues come into play, as somecountries have different classification system based on different writing scripts.
Interviewed users who brought up concerns over classification issues also recognized that it
is not a reason to abstain from using the Protocol. One of the most important reasons cited
why this is so is the abundance of resources provided by WIPO, particularly on its Website.
Furthermore, these interviewees also stated that once you become familiar with the Protocol
and correct classification, there is not a substantial increase in the amount of researchrequired. For example, one interviewee that did have some concerns stated that while theyran into some classification problems in the beginning that required an additional basic
application for their first Protocol application, once they learned how classifications work in
the Madrid System and availed themselves of WIPO’s online classification resources, they
have been able to make many successful Protocol applications without any classification
problems.
A final way that makes determining the classification difficult is the scope of theclassification. A number of interviewed users expressed their desire to cover as broad aclassification range as possible by using the Madrid System. However, there are times when
an applicant may not be able to cover as wide a range as possible because of the various
interpretations among member states. These interviewees therefore learned that when this is
the case, they must use creativity in their classification choices to ensure that they not only
cover as broad a range as possible, but also use the correct classification for WIPO and each
designated country.

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Regardless of the aforementioned concerns, it is important to note that those interviewed
users that experienced difficulties due to classification problems also recognized that thiswas due to the fact that the basic application or registration was one that was targeted
specifically for Japan and not changed in a significant way for use in a Protocol application.
In the cases of new basic applications or registrations, these interviewees stated that the riskof running into any classification issues is negligible.
9.9 Central Attack is Not a Significant Risk
The issue of Central Attack has already been discussed in detail in Sections 2.7 and 6.7.2, andwhile a portion of users are wary of Central Attack, only a few stated that it was anunderlying reason to abstain from further use of the Protocol. Most explained that throughtheir experience, they have learned that central attack is not a significant risk. Someinterviewed users actually experienced a Central Attack, but all were able to ultimately gain
trademark protection in the desired countries and/or regions through successfully making a
new Protocol application that solved any of the issues that resulted in central attack, or wereable to successfully transform the Protocol application into direct national applications. Of
those interviewed users that experienced Central Attack, some stated that they were notsurprised that it occurred because they knew the application was risky, while the remaining
interviewed users stated that they their experience taught them the importance of properdue diligence. If proper due diligence is conducted, most interviewed users stated that risky
applications can be avoided and nearly all Central Attack risk mitigated. As the data
presented here and in Sections 2.7 and 6.7.2 shows, Central Attack is nearly a non-issue andusers learned that any fears they may had before Japan acceded to the Protocol were allayed
after they actually used the Protocol.
9.10 The Initial Learning Period can be overcome Quickly and Safely
A common concern that arises among
potential users of the Protocol (in bothProtocol member and non-member
states considering joining) is that theprocess of learning how to effectively use
the Protocol will require too much timeand effort. 93 While a good portion ofinterviewed users faced difficulties in theearly days of using the Protocol in Japan,
Table 6 shows us that nearly none
stopped using the Protocol simply
Figure 11 - Correspondence from the IB
becauseof
thisinitialhurdle.
Furthermore, the data also shows that the initial learning period does not take a long time(from a few months to a year or more), and for those that did, nearly three-fourths
responded that this was because they only made a few applications per year.
In general, we can organize the initial difficulties interviewed users faced into five broad
categories: (1) learning how to correctly make the application; (2) learning how to correctlyclassify goods and services; (3) learning the appropriate responses to various notices fromthe IB; (4) the language barrier; and (5) incorporating a new management system specificallyfor Protocol applications and registrations. Regardless of this, most interviewed users statedthat they overcame the learning curve after they made a number of Protocol applications.
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Users that made many applications per month learned quickly, while others took more time
because they made fewer applications over the same period.94 For more detailed examples ofsome of the challenges interviewed users faced and how they were overcome, please see
Annex III.
9.11 Use of Domestic and International Representatives are Desirable
Most interviewed users continue to use third party representatives (at home and abroad) for
Protocol applications. This shows a trend towards the desirability of representatives among
Japanese Protocol users.
9.11.1 Domestic Representatives

Table 9 – Top Reasons for the
Use of Domestic Representation

In the Japanese IP community, there is a long
tradition of using domestic representatives to makeapplications and manage registrations at home andabroad. Trademark registration in Japan has followed
this trend for decades, and it has continued even after
the country acceded to the Protocol. Table 10 lists the
top recurring reasons for the continuation of using
domestic representation among interviewed users.
For more detail into each of these reasons, please see
Annex III.

9.11.2 Local Representatives
Equally important as representation in Japan,
nearly half of the interviewed users learned that theuse of local representatives in other countries
and/or markets could be vital to the success of a
Protocol application. Table 11 shows the top reasons
why this is the case. For a more detailed explanationof each reason, please see Annex III. Table 12shows the number of interviewed users that use
local representation for different types ofapplications, and the reasons behind this.

1

Culture and Tradition2

Safety and Security

3

Workload4

Language5

Know-how and Experience

6

Communication

Table 10 – Top Reasons for the
Use of Local Representation
1

Experience,
Know-How,
Knowledge of Local Laws

and2

Prior Art
DiligenceDue

3

Language

4

Basic
Applications
and/orRegistrations Outside Japan

5

Infringement

ResearchandWhat we can see from these reasons and examples in Annex III is that using local
representatives is equally important – and in some cases more important – than using
Japanese representatives to a good number of interviewed users. Furthermore, over half ofinterviewed users stated that even if they use a Japanese representative and local
representative abroad, a Protocol application is still more cost-effective, especially if five or
more countries are designated.

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Table 11 – Interviewed Users95 and Local Representation
Interviewed Users that also use Local Representation
For Direct National Applications

62%

For Direct National and Protocol Applications

46%

Also Use Domestic Representatives

85%

Do Not Use Domestic Representatives

15%

Have a Long-Standing Relationship with a Set of Local Representatives

8%

Local Representation Does Not Lessen the Protocol’s Cost-Effectiveness

94%

Because of Language Issues

9.12 Implementation of New Systems is Not Difficult or Costly
While interviewed users explained a variety of different systems they used to implement theProtocol, two were found to be recurring: (1) an electronic application, registration andrenewal management system; and (2) a new decision-making policy. On the surface it may
appear that these new systems would be difficult or costly to implement, however, mostexplained that this was not the case, while some said that the new systems brought
additional benefits to the user as a whole. Many of these systems have already been
discussed in detail in other sections; therefore, please see Annex III for more information on
the two main identified new systems.
9.13 The Protocol Can Facilitate Entering Into and Expanding New Markets
Although it ultimately can be more complicated than simply checking a box, someinterviewed users learned that use of the Madrid System can directly facilitate entrance into
new markets (with a few describing the relationship as indirect) and also expansion into
recently entered markets. Even though this is a relatively small number of interviewed users,
it is an important benefit that deserves further examination because it can bring significant
and long-term benefits to a user. Please see Annex III, Section 1 for these examples,96 whichshow us that even though there was a general consensus among interviewed users that using
the Protocol does not always directly result into entering new markets, there are situations inwhich it does in fact facilitate this and can help a user expand its market reach. Furthermore,
a number of interviewed users explained that the Protocol has made it easier for them todevelop and protect marks in certain regions, which in turn helps them expand into newmarkets more effectively.
9.14 More Southeast Asian Protocol Membership is Desirable
Southeast Asia represents one of the largest and most important regions for interviewed
users, and as a result one of the major reasons behind Japan’s relatively low use of the
Madrid System is because there are simply not enough Protocol members in the region.97
Overall, interviewed users explained that the Southeast Asian region is one of their largest
markets, and through experience with the Madrid System they have learned that the morecountries in this region that joined, the easier it would be for them to protect their marks andultimately enter these markets. Seven major reasons were identified why this is the case and
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as such why the interviewed users would like more Southeast Asian countries to accede to
the Protocol:
1. Interviewed users have manufacturing, R&D, and/or regional headquarters inSoutheast Asia;
2. Some countries in this region have intensive examination procedures or different
infrastructure than other countries, which makes national applications difficult;3. Many countries in Southeast Asia allow the registration of marks in Kanji, negating
the need for an additional basic Japanese application;
4. Southeast Asia is one of their largest markets;
5. Market access in Southeast Asia would become easier through a Protocol registration,
and would complement interviewed users’ expansion goals;
6. Many of their products and services are marketed under the same name throughout
Asia and Southeast Asia; and7. It is an effective means to combat trademark, product, and other types ofinfringement.
For more detail into each reason, please see Annex II for a number of real-world examples
provided by interviewed users.98
9.15 The Protocol Can Be Used to Combat Trademark Infringement
IP infringement is something that plagues a number of industries, and some interviewed
users have found the Protocol to be an easy and cost-effective way to combat trademark,product, and other types of IP infringement. For a number of interviewed users, even though
they may not have a significant market presence in specific regions, they still make direct
national registrations in order to protect their marks and brands. This is especially true forthose interviewed users that have manufacturing, R&D, or other facilities in those regions.
However, because of different IP systems, laws, and regulations, direct national applications
are not always the most effective means of securing the necessary rights. If Protocol
registrations could be made in these countries, however, these interviewees explained thatthey would use the Madrid System to make more applications designating many countries in
the region. Some of them explained that combating infringement is one of the key
considerations taken into account when they make Protocol applications. Furthermore, theseinterviewees explained that since they started using the Protocol they have been able toimplement a new approach to easily and cost-effectively designate countries in an
application in which they have experienced infringement and have many rivals. Using theMadrid System in this way allows such applicants to curb infringement, protect their marks,
and provides a safe way to bring their brands to new markets. Less risk of infringement canbring more opportunity, both for the user and the designated country. The more countries
that join the Protocol, be they in Southeast Asia or other regions, the more these benefits canpropagate and be useful to a wider range of consumers, and economies.
9.16 The Madrid System is a Positive Influence on the Local IP System
One such benefit that those interviewed from the JPO (and also a number of users)
recognized was that the Madrid System played an important role in positively influencing theJapanese IP system. From the government’s standpoint, three important positive influenceswere isolated: (1) an increase in language ability; (2) the modernization of internal systems;and (3) a positive change in culture. From the perspective of users, we can also isolate three

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important positive influences the Madrid System brought: (1) shorter examination period
and increased efficiency; (2) language; and (3) simplified procedures. For more detailed
information on the aforementioned reasons, please see Annex III.
9.17 Jobs Are Not Lost as a Direct Result of Using the Madrid System
When Japan first considered acceding to the Protocol, one valid concern raised by some in
the IP community was whether or not it would lead to the loss of jobs.99 This issue wasdiscussed in further detail in Section 6.6.1 from the overall effect of Japan acceding to theProtocol. While we will not repeat that information, we will briefly look at the issue from adifferent perspective and examine how Japanese users learned that using the Protocol is notin fact a direct risk to current jobs. Enacting legislation to accede to an international
agreement like the Protocol and actually using it are two different issues, and in this section
we will examine the latter. Simply because Japan acceded to the Protocol did not mean thatJapanese companies, organizations, and other entities were required to use it. Indeed,Japan’s 20% adoption rate shows that this is clearly not the case. For those that did choose
to use the Protocol, then, what effect has it had on jobs, if any? At first glance, it is easy to see
why there is cause for concern, both from the perspective of users and from representatives.
For users, the entire application and management process would become significantly easier,decreasing the amount of work required and theoretically also decreasing the number ofrequired positions. For representatives, because users can easily make a Protocol application
themselves, their services might no longer be required, which, for many (particularly those
focusing on international registration services), could translate into significant job cuts.
The interviewees’ experiences – both users and representatives – have shown that there is nocause for alarm when it comes to job reduction and the Protocol. Not one single interviewee
said that use of the Protocol directly resulted in job losses, and most interviewees believethat there is no direct correlation. This is due to a number of factors, which are slightly
different for users and representatives, and we shall first briefly look at what users havelearned. First, some of the interviewed users explained that regardless of whether they use
the Protocol or not, there is always more than enough work related to the management oftrademark applications, registrations, and renewals. Furthermore, as was discussed ingreater detail in Section 9.3, there are many additional issues that require action after the
initial application, and even though the Protocol is easier overall, jobs are still necessary toappropriately handle this work.100 For example, one interview actually increased the numberof people in its trademark division since using the Protocol from three to five, and someinterviewed users stated that they think jobs will increase, rather than decrease, because of
the Protocol. Second, these interviewees also explained that they still have a good deal ofwork to attend to besides trademark applications, registrations, and renewals. Combating
infringement, conducting due diligence and R&D, and developing new marks are all
examples of other work that interviewed users explained they are intimately involved in. Yes,
the Protocol made their work easier to an extent, they said, but the overall workload has notdecreased enough to warrant mass layoffs. For example, one interviewee explained thatwhile the Protocol has made it easier to manage their applications and registrations that
resulted in fewer files, the time savings would not warrant any job cuts. Lastly, as we havealready stated throughout this report, Japanese users tend to rely on the services ofrepresentatives, regardless if the application is made under the Protocol or through thedirect national route. The overall work load has therefore not significantly changed, andagain would not necessitate any HR changes.

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From the perspective of representatives, most have found that their work has gotten
somewhat easier through using the Protocol. However, just as is the case for users, thereduction has not been a driving factor to directly cause any reduction in jobs. Three major
factors again come into play here. First, as previously mentioned over 85% of Japanese users
continue to utilize the services of representatives even when the Protocol is used, therefore
the reduction of clients, if any, is minimal. Second, representatives have found that they areable to bring in new clients in the form of Madrid System users from abroad that aredesignating Japan and require help solving issues such as provisional refusals. Just as aJapanese user might need the services of a local representative abroad for a Protocol
application, so too may a user from abroad who is designating Japan in a Protocol
application. Lastly, language still plays an important role. This issue was approached infurther detail in Sections 7.3.1, 7.5.2, and 9.4, and what representatives have discovered isthat language issues make representatives’ services more desirable because they are better
equipped with the linguistic capability than the trademark departments of users. One
interviewee explained that from its own experience it feels that non-English speaking
countries in particular are at little risk of losing jobs due to language issues.101
Although these reasons provide us with an overall picture of the job loss correlation with theProtocol, it is important to recognize that some interviewed users have experienced a
reduction in jobs. In the case of users, some interviewed users have undergone restructuringthat resulted in a few positions becoming redundant. In the case of representatives, easierinternational applications via the Protocol have led to less work and a reduction in billable
time, which has had an effect on HR. Regardless, all interviewed users that have experienced
such circumstances stated that it was not a direct result of using the Protocol, but rather acombination of a number of factors of which the Protocol is just one. Furthermore, the JPO
has never received any complaints or information of people losing their jobs as a direct causeof using the Protocol.102 A majority also expressed their belief that concern over possible job
losses should not be considered as a main reason to abstain from acceding or using theProtocol.103

10. Conclusion
Throughout this report we have covered in-depth the experience of the Japanese government,
users, and representatives in implementing and using the Madrid Protocol. We have seenthat although there were fears and concerns prior to and following accession, these havebeen allayed for the most part. Even though Japan’s use of the Protocol remains low
compared to other countries, most interviewed users expressed their desire to use theProtocol more, and this is likely to increase. As users become more familiar with the longterm benefits of the Protocol, we have found that they are very likely to increase their use
and make it more a fundamental part of their IP strategy. Moreover, many of the difficulties
that Japan faced when it acceded to the Protocol were because it was one of the first
countries in Asia to do so. A number of unique issues came up, such as cultural and linguistic
differences, but even so Japan was able to successfully accede and make the Protocol an
integral part of its IP system. At the same time, harmonization of Japan’s domestic IP systemwith the international IP system brought many concrete advantages that continue tomanifest themselves in a variety of important ways. With Japan’s experience as a guide,
many other countries – especially in the Southeast Asian region – are also poised to reap
innumerable benefits from accession to the Madrid Protocol.

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ANNEX I – INTERVIEWEE LIST
This report is indebted to the following interviewees for their kind and invaluableparticipation.

I.

Companies
1. Ajinomoto Group
2. Asahi Group Holdings
3. Asahi Kasei Corporation
4. ASICS
5. Bandai Corporation, Limited
6. DIC Corporation
7. Daiichi-Sankyo Corporation, Limited
8. Eisai Corporation, Limited
9. Honda Motor Corporation, Limited
10. Hoya Corporation
11. Kao Group12. Kirin Brewery Company
13. Mitsubishi Rayon Corporation, Limited
14. Nikon Corporation
15. Nissan Motor Company Limited
16. Panasonic Corporation
17. Shimano Incorporated
18. Shiseido Corporation, Limited
19. Sony Corporation
20. Sony Computer Entertainment, Incorporated
21. Toray Industries, Incorporated
22. Toshiba Corporation
23. Toyobo Corporation, Limited
24. Yamaha Corporation
25. Yamaha Motor Company
26. Yokogawa Electric Corporation
II. Representatives
1. Asamura Patent and Trademark Office
2. Eikoh Patent and Trademark Office
3. Hikari Patent Office
4. Iijima Patent and Trademark Office
5. Kyowa Patent Office
6. Shimizu & Daigo Patent and Trademark Office
7. TMI & Associates
III. Government Officials
1. Mr. Kunihisa Ito, Japan Patent Office
2. Mr. Sunao Sato, Japan Patent Office

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ANNEX II – History of Japanese Trademark Legislation
Table 12 - Major Developments in Japanese Trademark Legislation (1884 - 1999)

Trademark OrdinanceType
Date Main Content
K Trademark Registration
Enactment
1884 K Trademark Examination
K First-to-File RuleK Submission of applications to the Ministry of Agriculture
Revision
1888
and Commerce by Applicants or their Representatives
K Agents Allowed to Act on Behalf of Individuals Abroad
Revision
1899 K Priority Regulations Implemented
K Applicant Granted Right to Appeal to the Daishin-in104
K Introduced Associated Trademark System
K Introduced System to Protect Well-Known Trademarks
Revision
1909
K Ability to Cancel Unused Trademarks
K Allow Appeals Against Examination Results
Trademark Law
TypeDate Main Content
K Require Trademark Publication
K Allowing Oppositions to be Filed Before Trademark
Registration
K Abolished Re-examination System
Enactment
1921
K Permitted Appeals to Japan’s Supreme Court
K Introduced Collective Trademarks
K Introduced Non-Claiming Right System
K Introduced Trademark Cancellation
Trademark Act
Type
Date Main Content
K Defined Terms: Trademark, Registered Mark, Mark, andUse
K Abolished Collective Trademarks
K Abolished Non-Claiming Right System
K Abolished Scope of Right Confirmation
K Abolished Limits to Color Use in Trademarks
K Requires a Trademark to be Distinguishable
Enactment
1959 K Shortened Trademark Registration Term from Twenty to
Ten Years
K Established Free Transfer and Use System
K Requirement to Set Up or Transfer Trademark Rights
K Established Defensive Mark System
K Established Trademark Judging System
K Established 34 Categories to Match International
Classification Standards
K Indication of Business Type Required on Application
K Assigning Burden of Proof for Non-Use in a Non-Use
Amendment 1975
Cancellation Proceeding
K Examining Usage of a Registered Mark During Renewal
Amendment 1992 K Service Mark System Added
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Amendment 1994

Amendment 1996

K
K
K
K
K
K
K
K
K
K

Amendment 1998
Amendment 1999

K
K
K

Adoption of the Nice Classification
Compliance with the TRIPs Agreement
Adoption of Multi-Class Application System
Development of a Three-Dimensional Trademark System
Adoption of a Standard Characters System
Allowing Registration Fees to be Paid in Installments
Abolishment of Substantive Examination on the Use of a
Registered Mark on its Renewal
Abolishment of the Association Trademark System
Introduction of a Post-Grant Opposition System
Adoption of a Re-Classification System of Goods andServices
Change in the Method for Calculating the Amount of
Indemnity for Damages Caused by Infringements
Implemented the Madrid Protocol
Establishment of a Prompt Publication System forApplications and Registrations

Table 13 - Major International Treaties and Agreements to which Japan is Party

Treaty / Agreement
Paris Convention on the Protection of Industrial Property
Nice Agreement Concerning the International Classification of Goods
and Services for the Purposes of the Registration of Marks
Trade-Related Aspects of Intellectual Property Rights Agreement(TRIPs)Trademark Law Treaty
Madrid Protocol

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Date
1899
1990
1995
1997
1999

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ANNEX II – Additional Examples from Interviewees
Cost-Effectively Reaching the World – the Case of the PlayStation Vita (PS Vita)*

For a company like Sony Computer Entertainment Incorporated (SCEI), Japan’s
accession to the Protocol made a positive and lasting impact on the way in which thecompany applies for and manages their trademarks. In particular the Protocol has helped
the company increase the number of countries in which they make international
registrations, thus protecting their popular brand names in as many regions as possible.
With a long history of utilizing the IP system through its parent company (Sony, Inc.), theintroduction of the Protocol has led to SCEI developing its own ranking system forcountries in which it will make trademark applications. The system scale is from A to D
and is used to determine whether or not a Madrid application is necessary. Traditionally,
Rank A refers to the company’s major markets in North America, Europe, and Asia, while
Rank B refers to South America and other emerging markets. Ranks C and D refer tosmaller markets which are not of immediate priority to the company.
Without the Protocol, the chance is high that SCEI would not seek protection for its
trademarks in C and D ranked countries. With the Protocol, applications can be easily
made in these countries because it is cheap and convenient, as the company need only file
one application and pay one fee regardless of the number of designated countries. This isespecially helpful for the trademarks of SCEI’s popular hardware, such as the PlayStation.
In the case of hardware, the Protocol has made it easy for the company to designatecountries that it does not have a traditional strong presence in to ensure not only that it
can be used in the future, but also to avoid the risk that some other entity will infringe on
the company’s trademarks in that specific market.
SCEI’s PlayStation Vita – popularly known as the PS Vita – handheld video game system
is an example of the many advantages of the Protocol put into practice. After deciding on
the name (PS Vita) for the innovative new product, SCEI conducted a thorough prior art
search to ensure that no other company or entity was using the name. After confirming
the originality of the name, they decided to use the Protocol to protect it because it is costeffective, efficient, timely, and convenient. Using the Protocol meant that SCEI could
make one application for all countries in which it plans to release the product, including C
and D ranked countries in which it may not seek protection if the Protocol was not an
option. The company stressed that the Protocol was the best choice and through it they
could secure trademarks for their new product, which is vital to the company’s corebusiness, in a timely manner for many countries through one application, and well inadvance of showing the product to the public for the first time in January 2011. With thehelp of the Protocol, the PS Vita was successfully launched in Japan in December 2011, inNorth America and Europe in February 2012, and in other worldwide markets in thesummer and autumn of 2012.
*This story appears with permission from Sony Computer Entertainment, Inc.

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Saving Time, Money, and Human Resources with the Protocol – the Case of Hoya
Corporation*

Hoya Corporation (Hoya), a major international manufacturer of optical products
including filters, lasers, contact lenses, and eyeglasses, is an example of a Japanese userthat has successfully utilized the Protocol to quickly, easily, and cheaply protect theircorporate brand worldwide. Prior to the Protocol, Hoya was protecting its corporate
trademark through over 150 direct national applications. This translated into asubstantial amount of work managing all of the different renewal periods, becoming
familiar with local laws and regulations, and hiring the services of local legal counsel tokeep abreast of any legal changes and defend any opposition. Because Hoya’s products
are sold all over the world (for example, the company is one of the world’s leading
manufacturers of the filaments and glass layers used in mobile phone screens), it wasessential that its name was protected worldwide, and with the absence of international
trademark legislation in Japan, the company utilized the direct national applicationroute. When Japan acceded to the Protocol, however, Hoya recognized that this was agreat opportunity to quickly and easily protect its corporate name through one
application, one set of fees, and one renewal date. In 2003 the company applied forinternational trademark protection under the Protocol for the Hoya name, andregistration has been granted in most countries by 2011. The entire process took minimal
time and registration came quickly, as Central Attack posed little threat because thecompany has over seventy years of history with national registered trademarks all over
the world. Using the Protocol is only one tenth of the cost of national applications, andhas made management and protection of Hoya’s brand name easier, safer, more costeffective, and more efficient.

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1. Examples Relating to Section 9.13
Shortly after Japan acceded to the Protocol, Interviewee One (I1) analyzed how it could be
best utilized, and soon discovered it could be used to secure trademark protection incountries in which it would have previously passed over. I1 works with an internal ranking
system. Before the Protocol, when it was decided that a specific country did not achieve ahigh enough rank because I1 did not have enough market presence there, a direct national
trademark application was not filed. However, because additional countries can be easily andcheaply designated, I1 determined that there were no disadvantages to utilizing more of theirranking system when a Protocol application is made. As a result, I1 was not only able tosecure registration for its mark in more countries quickly and easily, thus making future
entrance into these markets easier, it also served as a deterrent to would-be copycats, who
would now be subject to litigation because of the Protocol registration. Interviewee Two (I2)
– our second example – is similar, however it had a policy of not actually protecting its
marks in countries in which it did not have a large enough presence. Cost was the primaryconcern, as I2 found it too costly to protect a mark that it may or may not continue to use a
few months down the road. However, when I2 discovered the ease of use of the Protocol, it
decided that it could not afford to not protect its marks in these countries, as the cost was
minimal but the potential return much greater, provided the associated goods and/or
services were successful. In our next example, Interviewee Three (I3) decided to enter new
countries that were adjacent to countries in which it already had a strong presence. Again,
the ease of designating an additional country, the cost-effective nature, and the potentially

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significant resulting returns were all cited as reasons why this decision was made. In thiscase, I3’s decision proved to be the right one, and its protected mark became a commercial
success. Our final example, Interviewee Four (I4), recently acquired some companies in a
new region. Before the acquisitions, I4 would not make trademark applications (Protocol orotherwise) in this region because it did not have an extensive market presence there.
However, following the acquisitions I4 decided that the Protocol would be the ideal means
with which to easily and cost-effectively protect the marks of its new companies because they
did business in the region.
2. Example Relating to Section 9.4
Consider Holder A and Holder B, each of which may have a registration that mean the samething (such as “dream”) and fall under the same classification but are in different languages(i.e. Japanese for Holder A and English for Holder B). When Holder A transliterates its
Japanese mark into English to make a Protocol application, it would risk rejection of its basic
application because the new mark’s name and classification would overlap with the Holder
B’s prior registration. A combination of language and classification issues such as this could
therefore further exacerbate the problem that Japanese users have when they use a basic
application instead of a basic registration.
3. Examples Relating to Section 9.10
Interviewed users faced a variety of difficulties during their initial use of the Protocol, whichinternal and external forces helped them overcome. Under the Madrid System the forms andsupporting documents required are of course different from those that are required for anational Japanese application. A JPO published Protocol application handbook and joint
JPO-WIPO seminars and training sessions have helped all interviewed users thatparticipated quickly learn how to make a Protocol application. Learning a new classification
system also proved difficult. Japanese users had little experience with the NiceClassification,105 and it took some time to ensure classifications were in accordance with theclassification systems of all designated countries. As a result, almost half of the interviewed
users said that problems arose or mistakes were made, making the application take longer
than expected.
Some interviewed users explained that they found it difficult to know what to do when theyreceived irregularity letters and other notices from the IB. These interviewees experienced anincrease in workload that might not have occurred if it made a direct national application, as
the user would already be familiar with the follow-up procedure for any such necessary
action. However, these interviewees stated that they learned how to respond to suchcorrespondence and ensure that it would no longer be received. Although it was a “trial anderror” method, nearly half of the interviewed users said that they were able to overcome
nearly every issue, and over half stated that their workload decreased as compared to making
direct national applications.
No matter an applicant’s proficiency in English, it is of course much more difficult to makean application, respond to official correspondence, and manage a trademark application in asecond language. Furthermore, while the application itself is short, there are 17 additional
forms that may be required throughout the process, and the possibility correspondence from
WIPO to arrive in a different language than in which the application was submitted makes
things more difficult.106 Over half of the interviewed users singled out the language barrier as

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an impediment to initial adoption, and a number had to increase their language capacity
either by hiring new staff or providing language training classes in order to successfully
make and manage Protocol applications and registrations. However, as users got used to theProtocol they were able to overcome language difficulties, and most stated that in the end no
additional cost was required due to language.
Even so, there was a low initial rate of use of the Protocol in Japan. A number of factors
contributed to this. First, a few interviewed users explained that getting information about
the status and/or particulars of an application or registration was challenging. In particular,
over half of the interviewed users learned in many cases an official registration certificate
was required for certain uses of their marks but not provided by a number of designatedcountries. Secondly, the lack of detailed information on the application process and followup procedures created an air of uncertainty around the Protocol and the ultimate
ramifications of using it. Lastly, many prospective applicants (and some interviewed users)
would look to see what other users were doing first and try to learn from their experiences
before making their own Protocol applications.
While it took some time for the above-mentioned interviewees, overall they enthusiasticallyexplained that their previous concerns have been addressed. Continual improvement ofapplication and management of Protocol applications and registrations at the IB has broughteasier and quicker access to the information Japanese users desired, and much of it can befound on the Madrid System section of WIPO’s website. Furthermore, the number ofcountries that provide official registration certificates has increased, and as Japanese users
learned more about how the rules and regulations of the Madrid System work, the amount oftime that was required to check on various issues was reduced.
4. Examples Relating to Section 9.11.1
In Japan, Protocol users traditionally use domestic representation for the following reasons:(1) Culture and Tradition; (2) Safety and Security; (3) Workload; (4) Language; (5) Knowhow and Experience; and (6) Communication.
The first reason, while important, does not require a great deal of explanation. Because of theaforementioned tradition in Japan of using representatives, a few of the interviewed
representatives expressed their belief that Japanese users continue to use representatives
because it is part of their corporate culture and tradition. The relationship and trust built
between users and their domestic representatives has become an essential part of the users’
IP portfolio. Indeed, most interviewed users said that even though they are aware that they
can make Protocol applications without the services of a representative, because of the longand rich user-representative relationship, it essentially goes against the grain of the user’s
tradition.
The second reason – safety and security – is intricately linked with the first. For Japaneseusers, there is a sense of safety and security that the representatives will not only be
successful in their work, but will also have the best interests of the user at heart. Interviewed
users therefore predominantly feel that if they use representatives, the Protocol application
will be correctly submitted, safe from any problems such as Central Attack, and effectively
maintained without incident. An important aspect of this sense of safety and security is the
responsibility the representatives take for their work. When a user retains the services of arepresentative, that representative therefore assumes all responsibility for the success or

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failure of the Protocol application. Because users know that their representatives will doeverything in their power to avoid an unsuccessful application or problems with theapplication, some interviewed users said that this brought a sense of safety and security andis not simply about cost savings. Moreover, almost half of the interviewed users said thatshould anything go wrong, using a representative is safer. This is because the representative
will take full responsibility, and whatever means necessary, to rectify the problem(s).
For a number of interviewed users that were first using the Protocol shortly after Japan
acceded, the amount of work involved to successfully make Protocol applications and thenmanage the registrations seemed to be too much. 107 Because they have been using
representatives for years, some interviewed users explained, their HR were not as wellequipped to effectively manage all aspects of a Protocol application. Indeed, someinterviewed users stated that despite the ease of a Protocol application, they just do not havethe capacity to stop using the services of representatives. Moreover, other interviewed users
explained that if they stopped using representatives their workload would increase and bemuch more difficult to manage.
Although some of the interviewed users described the inability to make a Protocol
application in Japanese as a disadvantage, interviews with representatives yielded very
different results. None of them cited language as a difficulty when it came to the Protocol.
This is because they have been making trademark applications abroad for their clients for
decades, and usually have more than enough in-house translating and linguistic ability thatmakes the language concern a non-issue. This therefore makes the use of representatives
even more attractive, as they tend to have a greater overall linguistic capacity than the
trademark divisions of users.108 In addition, this greater linguistic capacity can translate into
an actual monetary savings for users, as fewer in-house translators are required. Just taking
into consideration the language issue alone, almost half of the interviewed users felt more
safe and secure when using representatives.
Because of the generally long history of using representatives in Japan, some interviewed
users stated that they felt more comfortable using representatives since they have more
know-how and experience with using the Madrid System. A number of interviewed users
have had a seemingly minor mistake negatively impact them through lost time and inability
to use a mark. Interviewed users have found that this is beneficial when it comes to prior art
research and due diligence for designated countries, as a few rely on their representatives forall such services, while most complete it in-house and then send it to their representatives
for further checks. Experience meant representatives would make fewer mistakes because
they are familiar with the appropriate procedures for issues such as fee payments, know how
to effectively respond to various correspondence and irregularity letters, and are aware of thebest recourse to take when a mark is refused. Furthermore, representatives tend to haveaccess to a wide variety of information on the appropriate usage of the Protocol in manydifferent languages, and experience with the Madrid Agreement also bolsters theirknowledge.
Lastly, communication is another important reason why the utilization of representatives
has remained relatively constant ever since Japan acceded to the Protocol. Interviewed users
have found that it is easier for them to communicate in Japanese with representatives they
have worked with for many years than try to directly communicate with the IB in English,
French, or Spanish. Language errors may increase the communication gap, and using

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representatives can limit misunderstandings. Most interviewed users have learned that it issafer to rely on representatives for handling communication such as irregularity letters,
because they tend to have more in-house capability to turn around a faster response. A
number of interviewed users ran into situations in which communication difficulties made it
unclear as to the best approach to respond to correspondence from the IB, and they foundthat such problems would not be faced if a representative were utilized.109
5. Examples Relating to Section 9.11.2
The first reason is logical: no matter how much experience a domestic representative has,
there is no substitute for real-world experience on the ground in the respective country. In
particular, these interviewees explained that local representatives have more knowledge on
local rules and laws, IP legislation, and how to mitigate any potential issues. Directly related
to this first reason, the experience and knowledge that local representatives have tends totranslate into more thorough prior searches and any other necessary research. Local
representatives are also in a good position to advise applicants on what type of mark has
more chance of success and how to navigate IP systems that may not be as mature as others.
Interviewed users found that this is especially true for those countries that have strict
examination procedures or a research infrastructure that is more difficult and/or time
consuming to use (such as a paper-based trademark search system).
Although representatives in Japan tend to have a high degree of efficiency in a number oflanguages, some interviewed users that rely on representatives stated that there werenumerous occasions when the language of one or more designated countries were either too
obscure for them to put resources into learning or not within the realm of theirrepresentative’s expertise. Without knowledge in the local language, either in-house or
through a representative, not only is it difficult to conduct prior trademark searches andother research, communication with the respective IP office(s) will suffer, and the applicant
will risk making incorrect responses to irregularity letters, refusal notices, or othercorrespondence. Furthermore, it could be difficult to learn IP legislation in each respective
country and keep up on any changes with no knowledge of the local language. Knowing the
local language – or working with someone who does – will also give an applicant anadvantage in understanding the culture and knowing how to effectively register a trademark
through the Protocol in the respective countries.
It is important to understand that a large portion of Japanese users have operations abroad,and indeed nearly every interviewee had a significant international presence at the time ofthis writing. In many cases, products and services are developed for the local market, and assuch the regional offices or subsidiaries make and manage trademark applications andregistrations. While these goods and/or services tend to be regionally targeted, there aretimes when the consumer base widens and the user wishes to market them abroad. However,
because of linguistic and cultural issues – and other issues such as market saturation andcompetition – these products may not be targeted to the Japanese domestic market. Indeed,over half of interviewed users had experience with such situations, and they learned that insuch cases it does not make sense to make another application in Japan to use as the basic
application or registration once it is approved. In such cases it is vital to use a local
representative, as they are able to provide all of the benefits Japanese representatives would
provide for a basic Japanese application or registration, and all the additional benefits of a
local representative.

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The last reason cited by interviewed users regarding the importance of local representatives
is that they can provide invaluable assistance to combat trademark infringement. These
interviewees explained that it is easier to counter and offset this problem by use of a local
representative when making a Protocol application, because they have more knowledge of
local IP laws and the regional environment, and can quickly take any necessary action.
6. Examples Relating to Section 9.12
Among those that implemented the first system, half explained that it was not too difficult or
costly to implement because: (a) it was developed in-house; (b) the necessary hardware andinfrastructure was already there; and (c) it did not take a significant amount of time, usually
ranging from a few months to one year. A number of interviewed users explained that while
their electronic systems have been beneficial for applications and correspondence, thebenefits would be made even more apparent when it comes time for renewals. As forJapanese representatives, they generally explained that because of the nature of their work
they required a more robust electronic system than their clients or even other users that do
not rely on the services of representatives. It therefore took more time and effort toimplement for some of these interviewed representatives. However, all stated that it was notprohibitively costly or difficult. Finally, most interviewed users explained that such a system
would likely be easier for potential users in a new Protocol member to implement, because
technology has become radically cheaper and more far-reaching in the years since Japan
acceded to the Protocol.
Nearly all of the interviewed users learned that the second type of system was necessary toeffectively capitalize on the benefits of the Protocol while making sure that it meets theirneeds and is suitable for a specific mark. The types of policies vary widely, and include
features such as a ranking system to determine the viability of a Protocol application for acertain mark, implementing a new round of discussions specifically addressing the pros andcons of a Protocol application, and creating overall criteria for when a Protocol application
should be made, e.g. only for corporate marks but not for localized marks. The common
theme in all of these systems found by over half of the interviewed users is that they require
little, if any, additional resources and time, because they are either simply neworganizational policies or additional discussion phases.
It is important to briefly examine the additional benefits that interviewed users have learned
can arise from implementing the two aforementioned systems. As for the electronic system,some interviewees stated that the benefits far exceeded expectations as their new system
could also be used for management of domestic and direct national applications,registrations, and renewals, thus saving significant time and money. Moreover, many ofthese interviewees decided to create a common system for their entire trademark portfolio,
thus increasing efficiency and ensuring that applications, registrations, and renewals areaccurately and correctly processed and managed in a timely manner, all while saving timeand money.110 As for implementing a new decision making policy system, interviewed users
generally stated that they found it promoted new thinking and new ways in which theirmarks could be effectively protected and managed, regardless of the chosen route.
Furthermore, they explained that such a system made them think more about the long-term
benefits of the Protocol (such as the ease of making renewals), and that they started toconsider making more Protocol applications.

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7. Examples Relating to Section 9.14
First, over three-fifths of interviewed users explained that because they have manufacturing
and/or R&D facilities in a number of countries in the region – plus regional headquarters –securing the rights to their marks is important. However, because of specific regional issues(such as a lack of a market for goods and/or services), it may not always be practical. Second,detailed examination process of some countries and many rules and regulations can bedifficult for some users to follow, which means that it can take up to a few years for approvalof a trademark application. A considerable linguistic disadvantage for a number of Japaneseusers of the Madrid System is that not all Protocol members allow for the registration of amark in Kanji. In Southeast Asia, however, some countries have within their IP legislation
the ability to register a mark in Kanji, and this is very attractive to Japanese applicantsbecause a mark can be registered and protected unchanged from its original form.
The next reason is rather self-explanatory: the Southeast Asian region is one of the largest
markets for nearly each interviewed user. Considering Japan’s location in Asia, it makes
sense that Japanese users desire more countries in the region to join, as many are left withlittle choice but to complement a Protocol registration with a number of direct national
registrations. Moreover, this would directly complement the next recognized benefit to moreSoutheast Asian countries joining the Protocol: easier market access and expansion. Manyinterviewed users expressed their desire to expand their market by bolstering theirinternational trademark registrations, and if more Southeast Asian countries joined thiswould come closer in reach. Moreover, more trademark registrations coming from abroadcan bring in foreign direct investment (FDI), stimulate competition and the local economy,
create jobs, and provide more choices for consumers.111
Because Southeast Asian countries have many cultural and linguistic similarities, mostinterviewed users explained that their goods and services tend to be marketed under one
name for the entire region. As a result, these interviewees have expressed that more Protocol
membership in the region would allow them to better protect and market their common
brands in many countries, all while bringing consumers the brands that they want andstimulating the local economy. Southeast Asia represents a major market for theseinterviewees, but access and expansion is at times impeded by the necessity of separate
national applications. For example, almost half of interviewed users explained that it is mucheasier to have one application, which has allowed some of such interviewees (and some of
the interviewed representatives’ clients) to expand into more countries and regions. A
majority of these interviewees desire to expand further, and have learned that the Protocol
could help them achieve this goal.
Lastly is the issue of combating infringement, which some of the interviewed users
recognized is as an advantage of the Protocol and one that would make entering Southeast
Asian countries more attractive. Protocol accession can save time and money for users, help
them combat infringement, remain competitive, and expand their activities into new
countries. At the same time, more Protocol members could stimulate economic growth, anda number of interviewed users have explicitly stated that Protocol accession would be a
deciding factor in moving jobs to countries in Southeast Asia.

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8. Examples Relating to Section 9.16
Government
Regarding the first influence, most interviewed users explained that before accession to theProtocol they felt that foreign language ability within the JPO was relatively low. Because
they needed to effectively communicate with WIPO and the IB, the JPO significantly
increased the foreign language ability (mostly English) among its staff. Secondly, as detailedin Section 5.2.5, the JPO implemented an advanced internal paperless system to manage
trademark applications and registrations,112 and interviewed users explained that the JPO
would not have likely introduced this system as soon as it did if Japan did not join the
Protocol at the time. The JPO implemented this new system throughout the organization,
which proved to increase overall efficiency, make management easier, and decrease theworkload.113 Lastly, the introduction of the Protocol in Japan changed the culture of the JPO
to an extent, as it introduced an international sense to the domestic IP office,114 which
increased staff morale and job satisfaction.115
Users
First, accession to the Protocol meant that the JPO was required to decrease its examination
period to a maximum of eighteen months. The JPO successfully achieved this in a short time
period, and has gotten even faster with national applications, completing examinations inmany cases in a matter of a few months.116 Users therefore found that not only could Protocol
applications be processed quickly, but so too could national applications. Furthermore,because a new domestic application is often required for a Protocol application (see Section
9.4 for further details), the quicker a domestic application can be processed and registered
the quicker a Protocol application can be made. Second, some interviewed users pointed out
the ability to make an application abroad in English – no matter the designated country –through the JPO is extremely beneficial. In addition, users are able to communicate with the
JPO in Japanese, and therefore the effects of the language barrier are lessened to a degree.
Lastly, Protocol accession has provided users with a simpler way to make an application
abroad. This has positively influenced Japan’s IP system in that it has provided its
participants with an easier and more effective path of international trademark protection.
Japan’s accession to the Protocol has brought benefits to not only those that avail themselvesof the Madrid System, but also for the local IP system as a whole.!!
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ANNEX III – NOTES!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
1 The 1891 Madrid Agreement Concerning the International Registrations of Marks (the “Madrid Agreement”) is

an international treaty governing international trademark registrations among its members. The Madrid Protocol
addresses additional concerns (such as language) relating to international trademark registration. Together, they
are known as the Madrid system and are administered by the International Bureau (IB) of the World Intellectual
Property Organization (WIPO), a United Nations (UN) specialized agency. For further information, see: WIPO.
The Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to theAgreement: Objectives, Main Features, Advantages.Geneva, 2010. Publication No. 418(E), 4; and: WIPO. “Whatis WIPO?” WIPO.Accessed 7 December 2011, http://www.wipo.int/about-wipo/en/what_is_wipo.html.
2In a survey conducted by the Japan Patent Office before accession to the Protocol, 49% of respondents

highlighted Central Attack as their greatest concern. Japan Patent Office. “The Madrid Protocol andHarmonization of the International Trademark System Research Report (Japanese),” Japan Patent Office.
(Tokyo: 1998), 25.
3Prior to Japan’s accession to the Protocol, the JPO took an average of twenty months from the initial application

to the registration or notice of refusal. Jan Tobias, Maricris, The Legal and Technical Implications of Japaneseand Philippine Accession to the Madrid Protocol (2007), 18. Accessed 21 July 2011,
http://www.jpo.go.jp/torikumi_e/kokusai_e/pdf/ipcoop_asia-pacific_e/2006jpo_philippine_e.pdf.
4JPO Officials, interview by the author, 15 September 2011.
5Ono, Shoen, “The History and Development of Trademark Law,” inOverview of Japanese Trademark Law, 2nd

Edition (Yuhikaku, 1999), 12.
6Jan Tobias, Maricris, The Legal and Technical Implications of Japanese and Philippine Accession to the MadridProtocol (2007), 6. Accessed 21 July 2011, http://www.jpo.go.jp/torikumi_e/kokusai_e/pdf/ipcoop_asiapacific_e/2006jpo_philippine_e.pdf.
7Babu, Nediyamparambathu, Effective Implementation of the Madrid Protocol with a Special Emphasis to theOrganizational Setup in India(2009), 41. Accessed 5 July 2011,
http://www.jpo.go.jp/torikumi_e/kokusai_e/pdf/ipcoop_asia-pacific_e/2009wipo_india.pdf.
8Jan Tobias, Maricris, The Legal and Technical Implications of Japanese and Philippine Accession to the MadridProtocol (2007), 8. Accessed 21 July 2011, http://www.jpo.go.jp/torikumi_e/kokusai_e/pdf/ipcoop_asiapacific_e/2006jpo_philippine_e.pdf.
9Jan Tobias, Maricris, The Legal and Technical Implications of Japanese and Philippine Accession to the MadridProtocol (2007), 10. Accessed 21 July 2011, http://www.jpo.go.jp/torikumi_e/kokusai_e/pdf/ipcoop_asiapacific_e/2006jpo_philippine_e.pdf.
10WIPO. “Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, List of

the Articles,” WIPO. Accessed 12 August 2011, http://www.wipo.int/madrid/en/legal_texts/trtdocs_wo016.html.
11WIPO. “Common Regulations under the Madrid Agreement Concerning the International Registration of Marksand the Protocol Relating to that Agreement, Rule 34(3)(b),” WIPO. Accessed 12 August 2011,
http://www.wipo.int/madrid/en/legal_texts/common_regulations.htm#P890_129015.
12The International Register is a register of all marks that is managed by the International Bureau at WIPO in

Geneva. WIPO. “Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks,
List of the Articles,” Article 2(1),WIPO. Accessed 2 August 2011,
http://www.wipo.int/madrid/en/legal_texts/trtdocs_wo016.html.
13WIPO. “Common Regulations under the Madrid Agreement Concerning the International Registration of Marksand the Protocol Relating to that Agreement,” Rule 20bis(6)(b), WIPO. Accessed 28 July 2011,
http://www.wipo.int/madrid/en/legal_texts/common_regulations.htm#P565_78481

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14 Transformation may take place with respect to any of the Contracting Parties in the territory of which theinternational registration had effect, that is any of the designated Contracting Parties in respect of which theinternational registration had not been the subject of a total refusal, invalidation or renunciation.
15WIPO. “Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, List of

the Articles,” Article 2(1),WIPO. Accessed 2 August 2011,
http://www.wipo.int/madrid/en/legal_texts/trtdocs_wo016.html.
16Ibid.
17Ibid.
18Trademark Law of Japan, Section 68tricies.
19Jan Tobias, Maricris, The Legal and Technical Implications of Japanese and Philippine Accession to theMadrid Protocol (2007), 9. Accessed 21 July 2011,
http://www.jpo.go.jp/torikumi_e/kokusai_e/pdf/ipcoop_asia-pacific_e/2006jpo_philippine_e.pdf.
20JPO Officials, interview by the author, 15 September 2011.
21Mr. Hisamitsu Arai, the Commissioner of the JPO at the time, brought about the first real efforts for Japan toaccede to the Protocol in 1997, and the final decision was made in September of that year. JPO Officials, interview
by the author, 15 September 2011.
22JPO Officials, interview by the author, 15 September 2011.
23JPO Officials, interview by the author, 15 September 2011. The JPO officials noted that potential users,

representatives, or anyone in the government levied no opposition. While some representatives were concerned
how the Protocol would affect their jobs, the number that expressed this was negligible.
24Unlike a direct national application, a representative is not required to make a Protocol application.

WIPO.
“Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and theProtocol Relating to that Agreement,” Rule 3, WIPO. Accessed 28 July 2011,
http://www.wipo.int/madrid/en/legal_texts/common_regulations.htm#P565_78481
25JPO Officials, interview by the author, 15 September 2011.
26JPO. “Third Meeting of the Industrial Property Subcommittee on Trademarks, Summary of the Minutes.” Tokyo,

Japan, 22 September 1998. Accessed 12 December 2011,
http://www.jpo.go.jp/shiryou/toushin/shingikai/m_plot2.htm
27Ibid.
28Among the users interviewed for this report, North America, the European Union, South America, andSoutheast Asia were highlighted as their major markets. When Japan acceded to the Protocol in 2000, many
countries in these regions had not yet acceded. WIPO. “Members of the Madrid Union, List of Members,” WIPO.
Accessed 20 September 2011,
http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf.
29The number of 43 includes Japan and is for all those countries that were members as of 14 March 2000. The

number of 84 is accurate as of 31 December 2011. WIPO. “Members of the Madrid Union, List of Members,”
WIPO. Accessed 20 September 2011,
http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf.
3086% of interviewed representatives have not experienced a financial loss directly due to the Protocol.
31Although no representatives officially lodged a complaint, some of those interviewed informally expressed theirconcern to the JPO.
32 For the purposes of this study, “interviewees” generally refers to all of those interviewed while “interviewed

users” refers to those that use the Madrid system, including representatives.

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33JPO Officials, interview by the author, 15 September 2011.
34Babu, Nediyamparambathu, Effective Implementation of the Madrid Protocol with a Special Emphasis to theOrganizational Setup in India (2009), 38. Accessed 5 July 2011,
http://www.jpo.go.jp/torikumi_e/kokusai_e/pdf/ipcoop_asia-pacific_e/2009wipo_india.pdf.
35JPO Officials, interview by the author, 15 September 2011.
36Wenhui, Huang. Establishing and Refining Trademark Examination System in China - Comparative Study on

Trademark Examination System between China and Japan (2005), 52. Accessed 19 October 2011,
http://www.wipo.int/export/sites/www/about-wipo/en/offices/japan/research/pdf/china_2005.pdf.
37JPO Officials, interview by the author, 15 September 2011.
38 Ibid.
39Government of Japan. “Trademark Act of 1959 (Japanese).” An English translation is available through a searchat the Ministry of Justice’s law translation service. Accessed 13 December 2011,
http://www.japaneselawtranslation.go.jp.
40Government of Japan, “Trademark Act of 1959 (Japanese),” Article 7-2. An English translation is available

through a search at the Ministry of Justice’s law translation service. Accessed 13 December 2011,
http://www.japaneselawtranslation.go.jp.
41JPO Officials, interview by the author, 15 September 2011.
42Babu, Nediyamparambathu, Effective Implementation of the Madrid Protocol with a Special Emphasis to theOrganizational Setup in India (2009), 42. Accessed 5 July 2011,
http://www.jpo.go.jp/torikumi_e/kokusai_e/pdf/ipcoop_asia-pacific_e/2009wipo_india.pdf.
43In the pre-accession survey conducted by the JPO in 1998, 36% of respondents expressed their concern overlanguage issues. Among the interviews conducted for this report, 64% explained that they have found language
present challenges.
44JPO Officials, interview by the author, 15 September 2011.
45Ibid.
46Oyuntsetsen, Badarch. A Comparative Study on Trademark Protection between Japan and Mongolia under

the Madrid Protocol(Tokyo, 2007), 20. Accessed 13 September 2011,
http://www.wipo.int/export/sites/www/about-wipo/en/offices/japan/research/pdf/mongolia_2007.pdf.
47JPO Officials, interview by the author, 15 September 2011.
4862% of interviewees stated that it was not costly to implement such changes.
49 5% of interviewees felt that the time costs involved to make Protocol applications were overly high.
50Examples provided by interviewees include new file management systems, updated computer software, andimproved workflow, among others.
51Prior to Japan’s Protocol accession, 54% of interviewees have made applications under the Protocol in otherProtocol or Agreement member states.
52JPO Officials, interview by the author, 15 September 2011.
53Jan Tobias, Maricris, The Legal and Technical Implications of Japanese and Philippine Accession to theMadrid Protocol (2007), 6. Accessed 21 July 2011,
http://www.jpo.go.jp/torikumi_e/kokusai_e/pdf/ipcoop_asia-pacific_e/2006jpo_philippine_e.pdf.
54JPO Officials, interview by the author, 15 September 2011.

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55 See Annex I for a complete list.
56JPO Officials, interview by the author, 15 September 2011. In addition, among those interviewed representatives,none lodged an official protest nor did they hear of any representative doing so. The concerns voiced byrepresentatives were described more as “rumblings” than official complaints.
5729% of interviewed representatives stated that they lost some business as a result of fewer clients. However,they also stated that this loss has not been great enough to pose a threat to their financial health.
58Jan Tobias, Maricris, The Legal and Technical Implications of Japanese and Philippine Accession to theMadrid Protocol (2007), 22. Accessed 21 July 2011,
http://www.jpo.go.jp/torikumi_e/kokusai_e/pdf/ipcoop_asia-pacific_e/2006jpo_philippine_e.pdf.
59Although many marks are registered in other languages such as English, domestic registration of marks inJapanese scripts is still common among interviewees.
60WIPO. “Guide to the International Registration of Marks,” Part B: Chapter II, WIPO. Accessed 16 November

2011, http://www.wipo.int/madrid/en/guide/guide_partb_2-07.html.
618% of interviewees have decided to abstain from further use of the Protocol for such reasons.
6285% of interviewees base their decision on the overall cost-benefit ratio.
6394% of interviewees stated that the Protocol still has cost benefits if a representative is used.
64A few interviewees took longer than six months, however they explained that this was because they made one or

two applications per year.
65As of this writing, the Nice Agreement has 83 Contracting Parties. WIPO. “Members of the Madrid Union, Listof Members,” WIPO. Accessed 20 September 2011,
http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf.
66Jan Tobias, Maricris, The Legal and Technical Implications of Japanese and Philippine Accession to theMadrid Protocol (2007), 49. Accessed 21 July 2011,
http://www.jpo.go.jp/torikumi_e/kokusai_e/pdf/ipcoop_asia-pacific_e/2006jpo_philippine_e.pdf.
67JPO Officials, interview by the author, 15 September 2011.
68When a Protocol application is made, three international classes are included at no charge. If the applicant

wishes to add more classes, a “supplementary fee” is required for each addition. A “complementary fee” is the fee
charged by each Protocol member that is designated in the application. For further information, see Schedule ofFees prescribed by the Common Regulations under the Madrid Agreement and Madrid Protocol at
http://wipo.int/madrid/en/fees/sched.html.
69The time period for refusal is generally 12 months, however under Article 5(2)(b) of the Protocol, a Contracting

Party can extend this period to a maximum of 18 months. If no refusal has been entered during this period, theregistration is granted for the concerned designated country.
70WIPO. “Members of the Madrid Union, List of Members,” WIPO. Accessed 20 September 2011,

http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf.
71Ibid.
72WIPO. “Guide to the International Registration of Marks,” Part A, Paragraph 02.09, WIPO. Accessed 16

November 2011, http://www.wipo.int/madrid/en/guide/guide_partb_2-07.html.
73Ali, Chaudhry Asfand.

Analysis on the Impact of Madrid Protocol for the Economies of Developing Countries(Tokyo, 2008), 33. Accessed 13 September 2011, http://www.wipo.int/aboutwipo/en/offices/japan/research/pdf/pakistan_2008.pdf.

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74WIPO. “Common Regulations under the Madrid Agreement Concerning the International Registration of Marksand the Protocol Relating to that Agreement,” Rule 3, WIPO. Accessed 28 July 2011,
http://www.wipo.int/madrid/en/legal_texts/common_regulations.htm#P565_78481.
75While at times language difficulties arise, none of the interviewed representatives stated that they lacked the

linguistic capacity to make and manage Protocol applications. In addition, 44.44% of interviewed users said that
this capacity was one of the main reasons why they continue to use representatives.
76The identity of this interviewee is not revealed for confidentiality and legal purposes.
77Ibid.
78JPO Officials, interview by the author, 15 September 2011.
79Ibid.
80JPO Officials, interview by the author, 15 September 2011.
81Japan Small Business Research Institute. “2011 White Paper on Small and Medium Enterprises in Japan,”

Ministry of Economy, Trade, and Industry. Accessed 22 November 2011,
http://www.chusho.meti.go.jp/pamflet/hakusyo/h23/h23_1/2011hakusho_eng.pdf
82Ibid.
83Japan Patent Office. “Annual Report 2011,” Japan Patent Office. (Tokyo: 2011), 97. Accessed 25 November 2011,

http://www.jpo.go.jp/shiryou_e/toushin_e/kenkyukai_e/annual_report2011.htm.
84The identity of this interviewee is not revealed for confidentiality and legal purposes.
8592% of interviewees stated that if proper research is conducted, all risk of Central Attack can be averted.
86The identity of this interviewee is not revealed for confidentiality and legal purposes.
87The refusal period described in Article 5(2)(b) is applicable to all Contracting Parties.
8885% of interviewees use representatives for trademark applications abroad, regardless of the method.
89Japan Patent Office. “The Trademark Examination Manual,” Japan Patent Office. (Tokyo, July 2001), Section

A2.05. Accessed 19 July 2011, http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/1308-029.htm.
9031% of interviewed users explained that a Protocol application might be more expensive if everything does not

go through smoothly.
91No interviewee stated that a Protocol application based on a Japanese registration did not go through as a resultof Central Attack.
92Example industries include textiles, food products, and mobile telephones.
9348% of interviewees explained that it took a moderate or significant amount of time to learn how to makeProtocol applications successfully.
94The maximum time given by interviewees was two years.
95Excluding interviewed domestic representatives and government officials.
96The names and particulars of these examples are kept anonymous for confidentiality and legal purposes.
97WIPO. “Contracting Parties,” WIPO. Accessed 23 November 2011,

http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=12.
98The names and particulars of these examples are kept anonymous for confidentiality and legal purposes.

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99There were no official complaints lodged and according to interviewees the concern expressed amounted tocasual “rumblings” among some in the IP community at the time.
100 Irregularity notices, provisional refusals, and objections are all examples of things that need to beappropriately managed besides the initial Protocol application.
101The name of this interviewee is purposely anonymous for confidentiality and legal reasons.
102JPO Officials, interview by the author, 15 September 2011.
10370% of interviewees stated that they feel no jobs are at risk due to using the Protocol.
104 The Daishin-in was the highest court that would hear appeals in Japan under the Meiji era constitution, from

1868 – 1912.
105Japan Patent Office. “Reclassification Information,” Japan Patent Office. Accessed 6 December 2011,

http://www.jpo.go.jp/cgi/linke.cgi?url=/torikumi_e/hiroba_e/hourei_e/trade.htm.
106WIPO. “Guide to the International Registration of Marks,” Rule 6(2)(i), WIPO. Accessed 16 November 2011,

http://www.wipo.int/export/sites/www/madrid/en/guide/pdf/guide.pdf.
107These initial difficulties were played a part in the decision that 12% of interviewees made to limit or abstain

from future Protocol applications.
108The linguistic capacity of representatives is why 44% of interviewed users rely on the services ofrepresentatives.
10927% of interviewees said that communication problems resulting in difficulties effectively handling various

notices from the IB.
11012% of interviewees coincided their use of the Protocol with an entirely new trademark management system.
111OECD. “Foreign Direct Investment for Development,” OECD. Accessed 14 December 2011,

http://www.oecd.org/dataoecd/47/51/1959815.pdf.
112Although this includes the management of Protocol applications and registrations, the actual application mustbe submitted to the IB in paper form.
113JPO Officials, interview by the author, 15 September 2011.
114Ibid.
115Ibid.
116Most interviewees said that the JPO is able to finish a national Japanese application in as fast as three to six

months.

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For more information
contact WIPO at www.wipo.int
World Intellectual Property Organization34, chemin des Colombettes
P.O. Box 18
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Switzerland
Tel: + 4122 338 91 11
Fax: + 4122 733 54 28