3

Problems Facing Japanese Users in Using the MadridProtocol System

Japan became party to the Protocol Relating to the Madrid Agreement Concerning theInternational Registration of Marks (Madrid Protocol) in 2000. By filing international
applications under the Madrid Protocol, users can enjoy a number of advantages compared with
filing applications directly with Offices of the respective countries. Such advantages include
easier preparation of documents, simpler management of rights, lower filing costs, earlier
ascertainment of examination results, and expansion of protection by subsequent designation.
The number of international applications filed by Japanese users has been increasing, but
the rate of use of the Madrid Protocol system has been lower than that in major European
countries.
We can assume that this is attributable to some background circumstances or problems specific toJapan.
In the awareness of such problems, we conducted a questionnaire survey and interview
survey of domestic users concerning problems in the Madrid Protocol system and practices, andinvestigated the opinions of overseas users and overseas Offices. We then conducted a study basedon these survey results and made proposals concerning the problems in the Madrid Protocol
system.
We hope that Japanese users will be able to better enjoy the advantages of the MadridProtocol system through resolution of these problems and that international protection of
trademarks will be further facilitated in the future.

I

European countries. We can assume that this is

Introduction

attributable to some background circumstances orproblems specific to Japan.

1

Background of Study
The international trademark registration
system based on the Protocol Relating to theMadrid Agreement Concerning the International
Registration of Marks (Madrid Protocol)(hereinafter referred to as the “Madrid Protocol
system”) is a system that allows users to acquire
trademark rights in other countries easily andefficiently.
Japan deposited the instrument of acceptanceof the Madrid Protocol with the Director General of
the World Intellectual Property Organization(WIPO) in December 1999, and the protocol tookeffect on March 14, 2000.
According to WIPO statistics, the proportion of
the number of international applications in the total
number of applications filed overseas by Japaneseusers was low compared with that of major

At the same time, it is extremely important forJapan to promote the use of the Madrid Protocol
system in Japan and to allow Japanese users tobetter enjoy the benefits of the Madrid Protocol
system.
Accordingly, for the purpose of this study, acommittee was set up from a total of nine members,
with Mr. Masayoshi Sumida, Professor at Tokai
University Law School, as the chair, and othermembers from among persons with relevant
knowledge and experience, corporate trademark
practitioners
property-relatedorganizations

byintellectual
(the

Japan

Trademark Association, the Japan Foods &Biotechnology Intellectual Property Rights Center(JAFBIC),

the

Japan

Intellectual

Property

Association (JIPA), and the Japan Patent Attorneys
1

IIP Bulletin 2007

recommended

Association), and patent attorneys. The committee

because of the financial burden involved, there canheld discussions over seven sessions.

be a system whereby the Offices send a statementthat the trademark will be protected if the applicant
makes such a request by paying certain fees.

II(4) The basis requirement is serving as a restraint.

Overview of Factors Specific to Japanfor the Infrequent Use of the MadridProtocol System and Possible
Resolution Measures

The basis requirement is considered to havethe following two aspects. Requirement A should be
abolishedandRequirementBshouldbemaintained.
Requirement A: The basic application or basic

1

Factors associated with the MadridProtocol system(1) The central attack is a matter of deep concern forusers.
For the time being, we desire this to beemphasized at explanatory meetings and seminars
held by the Japan Patent Office (JPO) or otherorganizations that the occurrence of a central attack
is very rare in Japan, so that such concern can bedismissed.
If the requirement referred to below that basic
application or basic registration (hereinafterreferred to as the “the basis requirement”) must
exist in Japan is to be abolished, the central attack
system is also likely to be abolished.
(2) Asian countries, in which Japanese users areinterested, are not party to the Madrid Protocol.
We would be able to enjoy the benefits of the
Madrid Protocol even more if other Asian countries
become party to the Madrid Protocol.
In order for Japanese users to enjoy thebenefits of the Madrid Protocol, it would benecessary to encourage Southeast Asian countries
including Thailand, Malaysia, Indonesia and thePhilippines to become party to the Madrid Protocol.
(3) There are few countries with which trademark
protection can be confirmed before the period for
notification of refusal elapses.
We desire that a notice that protection has
been granted be sent to the holder of theinternational registration from the Offices of all
designated Contracting Parties. This notice caneither be sent via the International Bureau or
directly from the Offices.
If the Offices are to refuse to send such a noticeregistration must exist in the Office of origin.
Requirement B: The applications filed with therespective States must contain the same trademark.
(Unity requirement)(5) It is unclear whether already owned trademark
rightsbereplacedwithinternational

registrations with no problem.
We desire that WIPO release materialsummarizing the systems of the Contracting
Parties

concerning

such

replacementofregistrations at an early stage. We further hope thatthe procedures specific to the individual Contracting
Parties will be unified in the future.
(6) The procedure for remitting the filing fee istroublesome.
We desire that payment by credit card, which
is used for payment at the time of renewal, be
accepted or any other simple payment method be
adopted for the payment of the filing fee to theInternational Bureau.
We request that the deposit system may be
used when paying the national fee to the JPO byproviding for exceptions to the procedure, which
include access to electronic filing.

2 Factors Inherent to Japanese Users(1) Users lack sufficient knowledge and experience
concerning the procedure.
We desire that, at explanatory meetings andseminars on the Madrid Protocol system held by the
JPO or other organizations, not only the system be
explained, but also that the participants beintroduced to the examples of notices that they may
receive from the International Bureau or Offices of2

IIP Bulletin 2007candesignatedContracting

Partiesafterfilingapplication system in Japanese users’ filings withinternational applications, examples of possible

South Korea, China and the United Kingdom (theresponses, and successful cases of international

rate differing according to the destination country)

applications.

The rate of the use of the international
application system for applications filed by
Japanese users with South Korea and China was

3 Other Factors(1) The filing cost per application is high.
We included this factor in the options in thesurvey, but it was not found to be a notable factor, as
it is not an essential issue, but a subjective issue.

less than 10%, while the rate for applications filedwith the United Kingdom has been increasing every
year, posting 42.5% in 2004.
(3) Awareness of the issue
The rate of the use of the international(2) Users are watching the filing trends ofapplication system by Japanese users has been

competitors.

increasing, but the rate was low compared withWe included this factor in the options in theother major countries. The factors which aresurvey, but it was not found to be a notable factor inassumed to be responsible for this situation are

the infrequent use of the Madrid Protocol system.

shown below.

3

III

Assumable Factors for the Infrequent Useof the Madrid Protocol System(i) The central attack may be a matter of deep
concern for users.
Japanese users may have concern about thecentral attack as a result of overemphasizing thedisadvantages rather than advantages.
(ii) Countries in which Japanese users areinterested may not be party to the Madrid Protocol.
The Contracting Parties of the Madrid Protocol
are more concentrated in particular regions, so
countries in which Japanese users are interested
may not be party to the Madrid Protocol.
(iii) The fact that a notice that protection has been
granted is sometimes not given even after 12 or 18
months may be causing inconvenience.
Since a notice that protection has been granted
is not mandatory, in some cases such notice is given
within 12 or 18 months, and in other cases it is not,even if the trademark has actually been given
protection. Japanese users may want to receive
such notice from all Contracting Parties.
(iv) The basis requirement may be serving as a
restraint.
The Madrid Protocol has been designed for the
purpose of expanding the territory of protection of
the trademark registered in the country of origin,

Situation of Japan Concerning theInternational Application

1

Situation Concerning the International
Application
The number of international applications filedin Japan has been growing, increasing to 148.1%
compared with the previous year in 2004 andincreasing to 191.4% compared with the previous
year in 2005. Japan ranked 11th among all
Contracting Parties in terms of the number ofinternational registrations in 2005.
However, the number has also been increasing
in other countries since 2003, and the rate ofincrease for Japan was smaller than that for othermajor countries.
2

Current Situation of the Rate of Use of theInternational Application System in Japan(1) Situation of the use of the international
application system (low rate)
The rate of the use of the international
application system in all applications filed overseas
in 2002 was 50% or more for major European
countries, but the rate was 8% for Japan.
(2) Situation of the use of the international
3
IIP Bulletin 2007

the international application is filed based on aexperience in filing the international application.

basic application and/or basic registration. However,Japaneseusers

sometimes

use

Japanese users may be hesitant to use thedifferent

system due to their concerns about filing thetrademarks in Japan and overseas, so they may

international application resulting from the greater

find the basis requirement inconvenient in such

focus on the disadvantages, such as use of thecases.

English language in the filing documents and theThese were the assumed factors. In theprocedure with the International Bureau, than on

examination process, the following points were also

the advantages.

considered as challenges.
(v) It is unclear whether already owned trademark
rights can be replaced with the international

IV Details of Factors Specific to Japan for
the Infrequent Use of the MadridProtocol System and Possible
Resolution Measuresregistration without any problem.
The requirements for application of thereplacement system and the effects thereof are left
to the national laws of the respective Contracting

The detailed information for deriving theParties, and the countries have different provisions.

proposals in Chapter II is outlined below.

Japanese users may find the replacement systeminconvenient.
(vi) It takes time before users are able to find out

1

Factors Underlying the Infrequent Use of
the Madrid Protocol System by Japanese
Users(1) Situation of the experience of using theinternational application system
As a result of conducting a domestic
questionnaire survey on the situation with regard to
the use of the Madrid Protocol system by Japaneseusers, more than half (53.2%) of the companies had
never used the Madrid Protocol system.
(2) Inconvenient aspects of the Madrid Protocol
systemWe examined the reasons for the infrequent
use of the Madrid Protocol system based on the
results of domestic questionnaire and interview
surveys, results of overseas interview surveys, anddiscussions by the committee.
As a result of the domestic questionnaire
survey asking about the inconvenient aspects of the
Madrid Protocol system, we gained the following
number of responses for each factor.

that protection has been granted.
The

international

registration

will

be

maintained if no provisional notification of refusal isgiven within 12 or 18 months, and this has the
merit of granting rights quickly.
However, the trademark examination period in
major countries has often become shorter than 12
months recently. Japanese users may find that it istaking too long before they can find out whether
protection has been granted.
(vii) The procedure for remitting the filing fee istroublesome.
The filing fee for the international applicationmust be paid prior to filing by remitting the fee in
Swiss Francs to WIPO. Therefore, when thenumber of classes has been changed or the numberof designated Contracting Parties has been
increased prior to filing but after remitting the fee,the user must remit the extra amount once again.
In addition, the payment to the JPO, which is the
Office of origin, must be made in patent revenue(i) The central attack is a matter of deep concern.

stamps, which is troublesome.
Japanese

users

may

find

this

(121 companies)

aspectinconvenient.

(ii) Countries in which Japanese users want to(viii) Concerns about filing because of having noacquire trademark rights are not party to the4

IIP Bulletin 2007

Madrid Protocol. (101 companies)

recognized by Japanese users and are somewhat(iii) A notice that protection has been granted is not

specific to Japanese users, by eliminating issues

given even after 12 or 18 months. (86 companies)that are also shared by users in other countries.

(iv) The international application cannot be filed

Meanwhile, the sixth-ranking factor “(vi) It

without a basic application and/or basic registration.

takes time before users can find out that protection(76 companies)

has been granted” can also be resolved by resolving(v) It is unclear whether already owned trademark

the third-ranking factor “(iii) A notice that protection

rightshas been granted is not given even after 12 or 18

can

be

replacedwithinternational

registrations without any problem. (66 companies)

months,” so the former was included in the latter in(vi) It takes time before users can find out thatthe examination.

protection has been granted. (47 companies)

As a result, we identified the following issues(vii) The procedure for remitting the filing fee isas those specific to Japan. The figure in parenthesestroublesome. (26 companies)

indicates the number of companies that responded.

(viii) The filing cost per application is high. (23companies)(i) The central attack is a matter of deep concern.
(121 companies)(3) Reasons that Japanese users choose the(ii) Countries in which we want to acquire

direct application with foreign countries

trademark rights are not party to the Madrid

rather than the international application

Protocol. (101 companies)(methods for strategic use of the international(iii) A notice that protection has been granted is notapplication)

given even after 12 months or 18 months. (86As a result of a survey on the factors forcompanies)

Japanese users choosing between the direct(iv) We cannot file the international application

application and the international application, thewithout a basic application and/or basic registration.

following factors were indicated. The figure in(76 companies)

parentheses indicates the number of companies(v) It is unclear whether already owned trademarkthat responded.

rights can be replaced with the international
registration without any problem. (66 companies)(a) Number of countries in which the trademark is(vi) The procedure for remitting the filing fee isplanned to be used and the number of countries

troublesome. (26 companies)

with which an application is planned to be filed (327(vii) The filing cost per application is high. (23companies)

companies)(b) Type of trademark (66 companies)(c) Priority of the application (51 companies)

Because some Japanese users (17 companies)(d) Satisfaction of the basis requirement (51indicated that they had concerns about filingcompanies)

because of having no experience in filing the(e) Standard or strategy for selection (44 companies)

international application, and 201 companies(f) Fee (44 companies)(53.2%) had never filed the international application,(g) Trademark management (29 companies)

we also discussed factors inherent to Japaneseusers.

(4) Examination of the factors
In examining the issues, we limited them to acertain number, focusing on issues that are
5
IIP Bulletin 2007

2

For the time being, we hope that it will be

Examination on the Infrequent Use of the
Madrid Protocol System by Japanese Users

emphasized at explanatory meetings and seminars(1) Factors associated with the Madrid Protocol

held by the JPO or other organizations that theoccurrence of a central attack is very rare in Japan,

system(i) The central attack is a matter of deep concern forso that such a concern will be removed. If the basis

users.

requirement is to be abolished, the central attack

Many Japanese users found the central attack

system will also be abolished and this factor would

to be a matter of concern (121 out of 249 companies

be resolved.

[49%]).
The number of central attacks that occurred(ii) Asian countries, in which Japanese users are

during the period from 2000 to 2005 was four. Twointerested, are not party to the Madrid Protocol.

of them resulted from opposition to registration andAccording to WIPO statistics, the rate of use of

the other two resulted from trial for invalidation of

the international application system in Japan was

trademark

8% in 2002.

registration.

The

numberofinternational registrations cancelled as a result of a

According to the results of the domestic

decision of refusal becoming final and binding wasquestionnaire survey, the rate of use of the63.

international application system by Japanese users
Among the Japanese users surveyed, 39 %was 23.2% in 2005 and when the destination

indicated a desire for abolition of the central attack

countries

system, 31% indicated a desire for maintenance ofContracting Parties, the rate was 44.1% in 2005.

the central attack system, and 19% indicated aThis suggested a tendency of using the Madrid

desire for shortening the 5-year dependence period.

Protocol system for filing with the Contracting

In order to remove the concerns about thewerelimitedtoMadridProtocolParties.

central attack, possible measures would be to

Japanese users were found to have filed 52.7%

maintain the system, abolish the system or shortenof their overseas applications with Asian countries.

the dependence period.

Of the top 20 countries with which Japanese users

The advantage of maintaining the system ishave filed direct applications, 13 countries are notthat the protection in all designated Contracting

party to the Madrid Protocol, and seven countries

Parties can be cancelled in one procedure evenamong these 13 were Southeast Asian countries.

when the international registration has been madeThis suggested that the main countries thatfor a trademark that should not be registered. The

Japanese users desired would become party to thedisadvantage is that the international registration

Madrid Protocol were Asian countries, particularly

can be cancelled by a central attack.

Southeast Asian countries.

The advantage of abolishing the system is that

The most notable factor in selecting thethe registrations in the Contracting Parties wouldinternational application over a direct application

not be cancelled even if the basic application or basic

was the number of designated Contracting Parties.

registration were cancelled. The disadvantage is

Overseas

users

only

showedsmall

that users can no longer enjoy the benefit of a

dissatisfaction that countries with which theycentral attack.

planned to file an application were not party to the

The advantage of shortening the dependent

Madrid Protocol.

period is that the period open to the risk of a central

If Asian countries become party to the Madridattack will be shortened. The disadvantage is that

Protocol, Japanese users will be able to enjoy

the period during which users can enjoy the benefit

further the advantages of the protocol. To that end,of a central attack will be shortened.

it would be necessary to encourage Southeast Asian6

IIP Bulletin 2007

countries including Thailand, Malaysia, Indonesia(iv) The basis requirement is serving as a restraint.

and the Philippines to become party to the Madrid

While the rate of use of the international

Protocol.

application system was high for trademark
applications filed from Japan to the United(iii) There are few countries with which trademark

Kingdom, the rate was not so high for applications

protection can be confirmed before the period for

filed from Japan to South Korea or China.

notification of refusal elapses.

In the domestic questionnaire survey, theOf the Japanese users surveyed, 87%

percentage of cases where the trademarks directly

responded that they wanted to confirm that

filed with foreign countries were the same as theprotection has been granted before the period for

trademarks in Japan in terms of their form was

notification of refusal elapsed. As for the desired

over 75% for those filed with Europe or the United

route of notice that protection has been granted,

States and around 60% for those filed with China or

15% preferred the notice to be sent via theSouth Korea.

International Bureau, 11% preferred the notice toOf the Japanese users surveyed, 38%

be directly sent by the Office, and 48% indicatedresponded that the basis requirement shouldthat either route is fine.

remain as it is, and 56% responded that they hopeAmong foreign countries users, the demand forfor its abolition or some amendment to it.

confirming the grant of protection before the period

Many of the European and U.S. users

of notification of refusal elapsed was low in Europe,

responded that the basis requirement should

the United States and China, but such demand was

remain as it is.

high in South Korea.

The rate of use of the international application

When the notice that protection has beensystem was found to be high in China because

granted is given by the discretion of the Contracting

exports of daily commodities and food by Chinese

Party, the advantage is that the workload

companies were intended for Chinese people living

associated with document management will bein countries around the world, and goods attaching

reduced, and the disadvantage is that users need to

trademarks used in China were being exported.

determine on their own whether a notice that has

At the meeting of the ad hoc Working

been sent has not arrived or no notice has been sent.

Group on the Legal Development of the Madrid

The advantage of obligating all Contracting

System held in June 2006 and January 2007, aParties to send a notice that protection has been

proposal was made with regard to examining the

granted is that such standardized practice would

abolition of the basis requirement, and this proposal

allow stable trademark management, and thewas supported.

disadvantage is that an extra fee would be required

The basis requirement is considered to havein some cases.

the following two aspects.

With regard to this factor, we desire that all

Requirement A: The basic application and/or basic

Contracting Parties be obligated to submit a noticeregistration must exist in the Office of origin.

saying that protection has been granted. The notice

Requirement B: The applications filed with thecan either be sent via the International Bureau or

respective States must contain the same trademark.

sent directly by the Office. If the Contracting Parties(Unity requirement)

cannot be so obligated, it is possible to adopt a

The solution for Requirement A is either tosystem where the Office optionally sends amaintain it or abolish it, while the solution forstatement that protection has been granted when

Requirement B is to maintain it or relax it.

the applicant has made such a request by paying acertain fee.
7
IIP Bulletin 2007

(a) Plan to maintain the current situation

application is allowed, bundles of direct applications(Requirement A: maintained; Requirement B:

will be filed with various countries as international

maintained)

applications, which would be advantageous inThis plan is unfavorable since it cannot deal

terms of both procedural workload and costs for thewith cases where an applicant wants to file theinternational

application

bychanging

applicants.

theHowever, it is difficult to set the scope of the

trademark from the one registered in Japan.

relaxation of the unity requirement and for the
Office of each country to determine the scope of

(b)

Plan

to

changeonly

RequirementBrelaxation, so the details of the plan need to be(Requirement A: maintained; Requirement B:

examined in the future.

relaxed)This plan, which maintains Requirement A,(v) It is unclear whether already owned trademark

cannot deal with cases where an applicant wants torightsfile the international application for a different

registrations with no problem.

can

be

replacedwithinternational

trademark based on a trademark that is not used inSince the replacement system is provided forJapan. Other problems include the fact that it isby the national laws of the Contracting Parties,difficult to set the scope of relaxation in a uniform

users need to check the national law of eachmanner and that, unless the scope of relaxation isContracting Party in order to replace a trademark

clearly set, opinions may become divided between

the user already owns into the international

the Office of origin and the applicant as to whether

registration.

the trademark falls within that scope. Therefore, it

As a solution, we desire that WIPO releaseis difficult to adopt this plan.

material

summarizing

thesystemsoftheContracting Parties concerning such replacement of
(c)

Plan

to

(RequirementchangeA:

only

RequirementAregistrations at an early stage, and that theabolished;

Requirement

B:

procedures specific to the individual Contracting

maintained)

Parties will be unified in the future. The

This plan has a disadvantage whereby therequirements, procedures, effects and certification ofcentral attack will not be available. However, thisreplacement to be unified should be examined inadvantage has little impact considering thatthe future.

applications can be converted into national
applications upon central attacks and that only a(vi) The procedure for remitting the filing fee isvery small number of central attacks has occurred

troublesome.

in the past. Therefore, this plan is worth adopting.

The procedure for paying fees for international
applications is more troublesome compared with(d) Plan to change both Requirements A and B

direct applications for which fees are paid at the(Requirement

time of or after filing. This is because if a change isA:abolished;

RequirementB:relaxed)made to the contents of the application before filing

One example of the international application

but after remitting the fee, the applicant has to go tothat has no registered trademark as its basis where

the trouble of paying the extra fee once again, andthe unity of the trademarks filed with the respective

the applicant also needs to make a repayment whencountries is relaxed would be a case where an

there is any change to the individual fees of theapplicant states multiple trademarks in a single

respective countries.

application and decides the designated Contracting

In addition, fees for international applications

Parties for each of those trademarks. If such an

are paid by remittance of foreign currency, and this8

IIP Bulletin 2007

procedure is not necessarily simple and easy.

VConclusion

As a solution, we desire that payment by credit
card, which can be used for payment at the time of

The purpose of this study is to clarify therenewal, be accepted or any other simple payment

problems of the Madrid Protocol system specificallymethod be examined and adopted. We also request

facing Japanese users by comparing the aspects ofthat the deposit system be usable when paying thethe Madrid Protocol that Japanese users consider tonational fee to the JPO by providing for exceptions

be problems with the opinions of overseas users on

to the procedure, which include access to electronicthese problems, thereby finding out whether it isfiling.

possible to resolve these problems and what kind of
Madrid Protocol system would be more convenientfor Japanese users.

(vii) The filing cost per application is high.

The following are additional remarks on major

This factor was one that had been suggested by
the committee, but it was not found to be a notablefactors.

factor, as it is not an essential issue, but a subjective(1) The central attack is a matter of deep concern for

issue.

users.
In the committee, it was found that the(2) Factors inherent to Japanese users

number of central attacks that has occurred in the(i) Users lack sufficient knowledge and experiencepast is not in fact well known, so we clarified withconcerning the procedure.

the cooperation of the JPO that central attacks have

Although

Japanese

users

have

been extremely rare.

some

We found that “abolition of the basis

knowledge of the Madrid Protocol system, they donotnecessarily

havesufficientrequirement” is one of the agenda items of WIPO’s

procedural

working group.

know-how such as the actual filing of theRegarding central attacks, we made a two-step

international application and dealing with English

proposal that the issue should be resolved bylanguage documents.
As a solution, we desire that, at explanatory

removing Japanese users’ concerns about central

meetings and seminars on the Madrid Protocol

attacks for the time being, and ultimately

system held by the JPO or other organizations, notabolishing the basis requirement.

only the system be explained, but also that the(2) Asian countries in which Japanese users are

participants be introduced to the examples ofinterested are not party to the Madrid Protocol.

theAlthough the conclusion was what we had

International Bureau or Offices of designatedassumed, we clarified, as a result of detailed

contracting

international

investigation and analysis of the Contracting

applications, examples of possible responses, andParties of the Madrid Protocol, that the filingcases of successful international applications.

destinations of Japanese users (foreign markets)

noticesthat they
parties

might
after

receivefilingfromwere Asian countries, which were different from the(ii) Users are watching the filing trends offiling destinations European and U.S. users (foreigncompetitors.

markets), and the fact that these Asian countries

This factor was not found to be an important

are not party to the Madrid Protocol was one reason

issue according to the results of the domestic

for the infrequent use of the Madrid Protocol system

questionnaire survey.

by Japanese users.
This result was achieved by carrying out anadditional elaborate questionnaire survey.

9
IIP Bulletin 2007

(3) There are few countries with which trademark

International Bureau, the system only requires aprotection can be confirmed before the period formuch lighter workload and lower remittance

notification of refusal elapses.

charges compared with direct applications, but

The notice that protection has been grantedsome users indicated that the procedure isshould not be non-mandatory, but such noticetroublesome.

should be given by all Contracting Parties in someSince credit cards have started to be accepted

form, and information on the kind of notification

for the payment at the time of renewal ofprocedure provided for in each Contracting Party

international registrations, if this service is also toshould be made accessible.

be applied to the payment at the time of filing, this(4) The basis requirement is serving as a restraint.

factor will be resolved.

The basis requirement is a basic requirement(7) Users lack sufficient knowledge and experience

for achieving the expansion of the territory ofconcerning the procedure.

protection of the trademark registered in theIt will be favorable if books are published orcountry of origin, so we started out our examination

explanatory meetings are held on how to prepare

from whether or not it is actually posing a problem.

documents for the procedure with the International

We thought of relaxing the basis requirement to

Bureau in filing international applications, anddeal with cases where Japanese users change their

examples of effective uses of the Madrid Protocol

trademarks depending on the economic zone, butsystem and examples of failures are disclosed in

we determined that this would give rise to asome form.

different problem. In contrast, we found that userconvenience would be increased by abolishing the

The committee, in anticipation that the factors

basis requirement, and by allowing users to filecausing the infrequent use of the Madrid Protocol

applications under the Madrid Protocol from thesystem by Japanese users will be resolved and thestart without having to file a national application. If

system will be used in a facilitated manner, hopes

self-designation also becomes possible, the Madridthat this report will contribute to the overseas

Protocol system is expected to become moretrademark acquisition strategies of Japanese users

attractive to users.

and will provide the basic material for choosing(5) It is unclear whether already owned trademark

appropriately between international applications

rightsand direct applications.

can

be

replacedwithinternational

registration without any problem.
Regardingthis

aspect,We also hope that this report will be used asweacquiredmaterial for reviewing the institutional problems of

information from the JPO that WIPO is expected to

the Madrid Protocol.

collect and publish materials on the systems of therespective

Contracting

Parties

Finally, we would like to express our gratitudeconcerning

to the Japanese and overseas respondents who

replacement. In this report, we disclosed matterskindly accepted and spared their valuable time tosuch as the requirements and effects of the

respond to the questionnaires and interviews thereplacement systems of six countries.

results of which provided the basic material for

It would be beneficial for Japanese users to

study by the committee.

identify an ideal form of alternative system and(Senior Researcher: Mitsuhisa ANDA)

consider harmonization of the systems in the future.
(6) The procedure for remitting the filing fee istroublesome.
As the Madrid Protocol system allows users to
pay fees through a single remittance to the10
IIP Bulletin 2007