JAPAN INTELLECTUAL PROPERTY ASSOCIATIONASAHI SEIMEI OTEMACHI BLDG.18F
6-1 Otemachi 2-chome
Chiyoda-ku Tokyo, 100-0004, JAPANTEL: 81 3 5205 3321
FAX: 81 3 5205 3391
URL: http://www.jipa.or.jp/November 12, 2021
Mr. Daren Tang
Director General
World Intellectual Property Organization,
34, chemin des Colombettes
CH-1211 Geneva 20, Switzerland
Re: POSITION PAPER on NINETEENTH SESSION OF THE MADRIDWORKING GROUP, Geneva, November 15 to 17, 2021 (MM/LD/WG/19)
Dear Mr. Tang,We, the Japan Intellectual Property Association or “JIPA”, is a non-profit,
non-governmental organization, which has 972 members (as of October 6,2021). It represents industries and users of the intellectual property (IP)system and provides related institutions all around the world withwell-timed, suitable opinions on the improvement of their IP systems andtheir utilization.
For further information regarding JIPA is available at http://www.jipa.or.jp/.
On the 19th Session of the Madrid Working Group meeting, we would like tomake the following statements according to the agenda.

MM/LD/WG/19/3

Provisional Refusal

JIPA supports the proposal that the time limit should be calculated from thedate on which the International Bureau transmits the notification to theholder and is in favor of having a minimum time limit of 2 months torespond to a provisional refusal. This proposal could result in the holder
having more time to respond to a refusal than the time limit calculated fromthe date of the decision by the Office. In addition, if holders have more than
2 months to respond to a provisional refusal, it would be helpful to consider
how to overcome the refusal with co-holders or to find and appoint a local
1attorney without conflict issue. Considering that the severe time constraint
which is less than 2 months in some countries prevents applicants frommaking well-considered responses, JIPA would appreciate that the proposal
from the International Bureau would be established as the rule at theearliest timing so the contents of the proposal could be put into practice inall the Contracting Parties. Equal starting date and sufficient minimum
time limit would give users more motivation to use the Madrid System.
MM/LD/WG/19/5

Dependency

JIPA’s basic position is that the Madrid System should be a simple, balanced
and user-friendly system for all users.
The “users” here includes not only the direct users of the Madrid System but
also any corporations, individuals and attorneys who are related to
trademarks through trademark clearance and so on.
International Bureau shows specific options for discussion, namely 1.
Reduction of the dependency period, 2. Reduction of the grounds forcancellation of an international registration, 3. Elimination of the automaticeffect of dependency and/or the combination of them.
After the agenda was released, various opinions from JIPA members werereceived, which can be summarized as below;
1.

Reduction of the dependency period - The reduction of the dependency
periodapparently

strengthens

thecertaintyofinternational

registrations and is welcomed by rightful owners. On the other hand, if
the dependency period is reduced to three years from its international
registration date, an international application registered during theexamination of the basic application will be released from dependency
before three years from the registration date of the basic mark. It means
non-use cancellation of the basic mark has no influence on theinternational registration if the basic country adopts a three-year bar of
non-use. In that case, users are required to file separate petitions ineach country to cancel the international registration, which increases
the burden on both the Office and the user, and reduces the deterrenceof the central attack especially against applicants with a hidden unfair
or run-out intent. In other words, a shorter dependency period mightmake international registrations a little too stable.
2.

Reduction of the grounds for cancellation - Opinions of JIPA members
2are mostly negative toward limiting the grounds of central attack only to
bad faith. Rather, some members expressed they prefer the extended
dependency period for the cancellation of the basic mark due to badfaith.
3.

Elimination of the automatic effect of dependency - Most opinions JIPA
received view this idea as worth considering. But as this idea createssome burden to the petitioners of cancellation, it is important to secure
the accessibility to the information on the international registration,such as notification from the Office that the cancelled local mark is thebasis of international registration, and/or simplicity of the cancellation
procedure at International Bureau.

4. Other– JIPA received opinions that, to achieve the balanced relaxationof dependency, it is worth considering introducing the uniform
evaluation standard of publicity toward thebasic marks andinternational registrations. In particular, the publicity of international
registrations and their basic applications/registrations should beexamined under the international publicity at their examination,
opposition and cancellation/invalidation stages in each Office. Currently,
some member states only consider the domestic publicity of trademarks,
but taking in mind that the core principle of the Madrid System is theextension of national registrations, there should be no member states
where the bad-faith applicants can take advantage of the inward-looking
national laws to outbreak the unfair registrations internationally.
Considering those opinions as well as the recent sharp increase of
trademark applications worldwide, JIPA has a concern about whether thesimple reduction or elimination of dependency in any manner can contributeto the better balance of the Madrid System. Thus we expect InternationalBureau and Offices to fully consider the balanced development of theMadrid System which encourages rightful users and discourages unfairusers.
MM/LD/WG/19/7

Revised Study of the Cost Implications and TechnicalFeasibility of the Gradual Introduction of the Arabic, Chinese and Russian
Languages into the Madrid System and Other Relevant Information
With regard to the proposal for the introduction of Arabic, Chinese andRussian languages into the Madrid System for the international registration3

of Marks, JIPA proposes to have a further discussion as we are concerned.
1. The meaningful introduction of new languages
The Working Group provided the historic background that English andSpanish were added as working languages for the purpose of promoting
the geographical expansion of the Madrid Union. We believe that thesignificance of the addition of new languages should be discussed again
to form a consensus. We assume the meaning of the introduction of newlanguages should be discussed first to form the consensus among all theOffices and observers. The Delegations that had proposed theintroduction of new languages allege that the United Nations uses theselanguages as their official languages. However, consideration should begiven not only from the viewpoint of applicants, including new users, butalso from the viewpoint of third parties who search and monitor theearlier applications on the Madrid Monitor. Further, if the official
language of a country with a large number of applications is to be added,
Japanese should also be added since the number of applications by
Japanese companies is also large. However, the correctness of thisapproach should be examined considering the purpose of the new
language addition.
2. The burden of translation cost for users
The International Bureau provides to translate communications such asnotifications of provisional refusal from the Offices of the designatedContracting Parties into the existing languages. If the new languages
are introduced into the Madrid System, it is not enough just to translate
the current communications from the position of the third parties who
use the Madrid Monitor for clearance searches and/or monitoring. To
make up for the deficiency, users from non-speaking countries of newlanguages will have to bear an additional cost to translate othercommunications than provisional refusals into English. In view of thenumber of non-speakers of new languages in contracting parties, it is
not a reality-based policy to introduce a differentiated translation
practice. If this practice is introduced, the users from non-speaking
countries of new languages will incur substantial costs to translate allcommunications they need into English by each clearance search and/ormonitoring. Therefore, JIPA does not agree with this proposal ofintroducing a differentiated translation practice. Allowing that New4

languages should be adopted, it needs to be achieved without theadditional burden of translation cost for users. This would require that
all communications including all notifications from the Offices of thedesignated Contracting Parties as well as all the responses fromapplicants and holders are translated into English and all the English
translations shall be treated as authentic. The introduction of Arabic,
Chinese and Russian into the Madrid System for the international
registration of marks requires that all correspondence be provided in
English and treated as authentic and that all authentic be disclosed in
English on the Madrid Monitor, without delay and without an increasein the official fee to users.
3. The countermeasure against bad faith applications
In recent years, there has been a rapid increase in cross-border bad faithapplications, and applicants with unfair purposes have filed large
numbers of applications not only in their own countries but also in
foreign countries. The Working Group seems to have been focusing on
considering the quality and cost of translations so far, but considering
the countermeasure against bad faith applications is the critical task aswell. If the International Bureau expects the expansion of new users, it
should be noted that such expansion could lead to the rapid increase ofbad faith applications.

It is necessary to thoroughly examine how toprevent bad faith applications from being made in the midst of a large
number of genuine applications, as well as the effects of increasing
numbers of bad faith applications.
JIPA looks forward to participating again at Geneva in the future Madrid
Working Group meeting after moderating the various restrictions around
COVID-19.

Yours sincerely,

Koji SAITOManaging Director of JIPA
5