4 Problems with Procedures in Using the Madrid Protocol (*)
The international trademark registration system based on the Madrid Protocol is useful for making theprocess of obtaining trademark rights overseas easy and efficient. Its advantages for applicants have been
expanding since the system was first enforced, due to an increase in the number of the member countries andmany amendments to the regulations. However, the ratio of applications filed by Japanese users based on the
Madrid Protocol System in all foreign applications filed thereby is not necessarily high. Therefore, in this researchstudy, we first looked for problems with procedures for filing applications with the Japan Patent Office (JPO) as theoffice of the home country or the office of a designated country under the Madrid Protocol System in relation to
problems with procedures in using the Madrid Protocol. After that, from the perspective of providing user-friendly
services, we conducted a domestic questionnaire survey, domestic interview survey, overseas interview survey, anddomestic and international literature search, including WIPO's statistic information, and considered
improvements to the operations of procedures, etc. based on the Madrid Protocol System at the committee based on
the survey and search results.

I

Introduction

1

Background of Consideration

With the globalization of economic activities,
the need for obtaining trademark rights overseas
has been growing more quickly. The international
trademark registration system based on the
Protocol Relating to the Madrid Agreement
Concerning the International Registration ofMarks, which was adopted on June 27, 1989 in
Madrid (hereinafter referred to as the "Protocol"),
is a useful system for making the process ofobtaining trademark rights overseas easy andefficient. Its advantages for applicants have been
expanding since the system was first enforced,
due to an increase in the number of the member
countries and recent amendments to theregulations. In fact, the number of applications
based on the Protocol system that the Japan
Patent Office (JPO) receives as the office of thehome country increased by about 69% over thelast five years. The Protocol system has become
increasingly useful as a means of obtaining rights
internationally. However, the ratio of applications
filed based on the Protocol system by Japaneseusers in all foreign applications filed thereby is
not necessarily high. Moreover, while discussions
aimed at a system that is more convenient forusers have been intensifying internationally,users have pointed out the lack of convenience,
including cumbersome fee payment procedures
and the inability to file applications on-line.
Therefore, it is necessary to first understandproblems with the procedures for filing

applications with the JPO as the office of thehome country or the office of a designatedcountry under the Protocol system, and then toadvance considerations on improvements tooperations concerning procedures, etc. under the
Madrid system, including improvement of the fee
payment method and propriety of introducing an
on-line application.
Therefore, we conducted this research study
with the aim of improving the system's
convenience, to enable users to use it morestrategically by studying, organizing, andanalyzing the actual conditions of use, etc. of theProtocol system, etc. and preparing basic
materials
forconsidering
proposalsofamendments
totheregulations
andimprovements to operations in order to continue
to operate the Protocol system in a functionalmanner.
2

Method of Conducting This ResearchStudy(1) Consideration at the Committee
In order to hold discussions on theprocedural and institutional problems with theProtocol system through careful consideration,
analysis, and obtainment of specialists' advice on
this research study, a total of six experts
recommended by intellectual property-relatedorganizations (Japan Trademark Association,
Japan Intellectual Property Association, and Japan
Patent Attorneys Association) and industry
groups (Japan Electronics and Information
Technology Industries Association and Japan(*) This is an English translation of the summary of the FY2012 JPO-commissioned research study report on the issues
related to the industrial property rights system.
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IIP Bulletin 2013 Vol.22

1 ●Foods & Biotechnology Intellectual Property
Rights Center) composed a committee chaired by
Jiro Hayashi, a patent attorney. The committee
members held three discussions.
(2) Domestic Questionnaire Survey
We conducted a questionnaire survey
concerning this research study, targeting 1,100
domestic companies, etc. that frequently use theProtocol system, and received replies from 462(collection rate: 42%).
(3) Domestic Interview Survey
Using the results of the domestic
questionnaire survey as reference, we conducted
an interview survey on requests andimprovements in relation to the issue of thisresearch study, targeting nine companies and 12
trademark offices.

system that have been registered has been
continuously increasing since Japan's accession.
In 2011, the number increased by about 69%
compared to five years previous, reaching 1,582.
Moreover, the number of applications filed byforeign applicants based on the Protocol system
while specifying Japan as a designated country
took a downward turn in 2009, but recovered to alevel exceeding 12,000 in 2011. However, theratio of applications filed by Japanese users in themember countries of the Protocol system byusing the Protocol system in all foreign
applications filed thereby in such member
countries is 20 to 30%, which is lower than theratios in European countries, that is, 40 to 60%.

Ⅲ Evaluation of the Protocol
System by Japanese Users
1(4) Overseas Interview Survey
We conducted an interview survey targeting
13 interviewees, specifically, two companies andone trademark office (two trademark offices forSouth Korea) in the United States, Switzerland,
Germany, and South Korea, respectively.
(5) Domestic and International Literature
SearchWe searched, organized, and analyzed usefulliterature for this research study by using books,
papers, study reports, council reports, database
information, Internet information, etc.

Ⅱ Status of International Applications
Filed by Japanese Users
With an increase in the number of themember countries, the Protocol system has
become increasingly useful year after year as afiling system designed to make the process ofobtaining trademarks overseas easy and efficient.
In particular, nowadays when globalization of
corporate economic activities has advanced, thenecessity of obtaining trademark rights overseas
has expanded, and the number of international
applications filed by using the Protocol system
has also been increasing steadily.
In 2011, the number of international
applications filed and registered based on the
Protocol system for the entire world exceeded
40,000; and the number of existing international
registrations reached 540,000 as of the end of
2011. The number of international applications
filed by Japanese users based on the Protocol●

Standards for Choosing an Application
Route

When a Japanese user files a trademark
application overseas, he/she has two options forapplication routes. The first option is the Direct
Route, a method by which he/she directly
requests a country's competent office forprotection of the trademark. The second option is
the Protocol Route, a method by which he/sherequests protection of the trademark by obtaining
an international registration of the trademark
based on the Protocol.
(1) Users of the Protocol RouteAccording to the domestic questionnaire
survey, most users of the Protocol system cite
the number of countries in which they fileapplications and the breakdown of such countries
as standards for choosing an application route. Asa reason for using the number of countries inwhich they file applications as a standard forchoosing an application route, they cited the factthat filling applications in multiple countries at atime costs less than filing applications throughthe Direct Route. In addition, as for the
breakdown of countries in which they fileapplications, such countries are chosen based onprocedures and systems peculiar to each country
and compliance of the Protocol system with thespecificity of designated goods and services.
(2) Nonusers of the Protocol RouteAccording to the domestic questionnaire
survey, about 60% of nonusers of the Protocol
system file applications overseas through the
2 ●IIP Bulletin 2013 Vol.22

Direct Route after considering using the Protocol
Route. The following were cited as major reasonsfor having chosen not to use the Protocol Route:(1) Countries in which they want to obtaintrademark rights have not acceded to the Protocol
system; (2) They cannot fulfill the basic
requirements for using the Protocol system. In
addition, they also cited the effort of management
required due to concurrent existence oftrademark registrations through the Direct Routeand those through the Protocol Route or concerns
about central attacks.
Furthermore, it was revealed that about 40%
of nonusers of the Protocol system choose the
Direct Route without considering using theProtocol Route for such reasons that they do notfind the Direct Route to be inconvenient and do
not feel enough of an advantage would gained
from using the Protocol system to make themchange the application route.
2

Advantages of Filing Applications
through the Protocol RouteAs the advantages of filing applications
through the Protocol Route compared to the
Direct Route, most cited cost advantage, followedby simple and easy application procedures,
availability of lump-sum management oftrademark registrations in multiple countries, andexpansion of protection through subsequent
designation. With regard to the cost advantage,
many shared the opinion that in the case of filing
applications in three or more countries, the costfor filing is lower through the Protocol Routecompared to the Direct Route.
3

Disadvantages of Filing Applications
through the Protocol RouteThe limitation of countries in whichapplications can be filed (member countries),
likelihood of rescission due to a central attack,and fulfillment of the basic requirements were
frequently cited as disadvantages of filing
applications through the Protocol Route comparedto filing applications through the Direct Route.
Concerns about the effectiveness of the Protocol
system, including the probative force of astatement of grant of protection in exercising aright, and effort of management required due toconcurrent existence of trademark registrations
through the Direct Route and those through theProtocol Route were also cited as disadvantages.

●

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4Countries
Where
There
Are
Advantages/Disadvantages of Filing
Applications through the Protocol
Route

China (Reason: Though it is necessary to filean application with respect to each class throughthe Direct Route, it is possible to file anapplication for multiple classes when using theProtocol Route), Europe (Reason: It is rare toreceive a notification of provisional refusal basedon goods and services), and the United States(Reason: It is not necessary to submit evidence of
use at the time of filing) were frequently cited ascountries where there are advantages of filing
applications through the Protocol Route comparedto filing applications through the Direct Route. In
addition, some were also of the opinion that there
are countries where power of attorney and otherprocedures are not required through the Protocol
Route as it is not necessary to individually takeprocedures in the case of using the Protocol
system, and that it is possible to take proceduresin countries where an applicant cannot
understand the language used as it is possible tofile applications in English in the case of using theProtocol system.
On the other hand, many held the opinion
that there are disadvantages of filing applications
by using the Protocol Route in China (Reason: A
certificate of registration that is automaticallyissued through the Direct Route is not issued
through the Protocol Route without application)and the United States (Reason: Period
management is separately required as it isnecessary to submit evidence of use via a U.S.
representative five years after the date ofregistration in the United States).

Ⅳ Consideration of Problems in
Using the Protocol System
As mentioned above, application procedures
significantly affect the standards for choosing anapplication route and advantages of using theProtocol Route. Problems with the procedures are
considered below.
1

Problems with Application Procedures
by Using the Protocol System byJapanese Users

The procedural problems that need to besolved to improve convenience for Japanese users

3 ●are in the areas of (1) cumbersome method of
paper procedure, (2) cumbersome fee payment
method, (3) delay in administrative processing
procedures at WIPO, (4) fulfillment of the basic
requirements, (5) specificity of indications ofgoods and services, (6) impossibility ofprocedures for dividing an international
application,
and
(7)
lack
of
sufficientknowledge/experience concerning the Protocol
system. We held discussions in these areas.
(1) Method of Paper Procedure(i) Method of Submission
Only one method of submitting filingdocuments permitted under the current system
requires them to be submitted with the JPO in
writing. As a desirable method of submitting filingdocuments in the future, many Japanese users
answered that it would be better if all documents
could be submitted on-line. As reasons thereof,
some held the opinion that it is possible to savethe trouble of sending by mail and visiting theoffice, and that it is possible to prevent misprints
from occurring in computerizing paper-based
applications at WIPO. On the other hand, there
was the opinion that there is not much need foron-line filing, because the number of applications
is small. There was also a deep-seated request for
flexible responses, such as replacement, in
paper-based procedures. With an increase in thenumber of applications filed by using the Protocol
system, request for introduction of on-line
procedures is expected to further increase in the
future. In this regard, there is information that a
website-based application tool is now underdevelopment at WIPO. Therefore, it is necessary
to verify the availability of the system while
paying close attention to the status ofdevelopment of the system.
(ii) Location to which an Applicant Submits
Documents
With regard to the location to which an
applicant submits procedural documents, morethan a half submitted documents to the JPO that
could be submitted to either WIPO or the JPO. In
addition, many respondents requested the ability
to choose the JPO as a location to which an
applicant submits documents with regard to
documents that can now be submitted only to
WIPO. Therefore, if this becomes permissible,
convenience for Japanese users is expected tofurther increase. On the other hand, behindJapanese users' desire to submit documents to
the JPO are the impossibility of confirming that●the documents have been received by WIPO
without fail in the case of submitting them to
WIPO and procedural concerns, such as delays inprocedures at WIPO. Therefore, it is also usefulfor satisfying the aforementioned request to
inform Japanese users of the Madrid Portfolio
Manager (it is possible to submit procedural
documents to WIPO by uploading them on-line)
which WIPO is newly providing.
(iii) International Application Formats
With regard to the formats for filingdocuments, there was no special request for
improvement. However, some requested a reviewof the formats to ensure conformity to thesystems of designated countries. This is because
a notification of provisional refusal is issued incountries where a description of the mark is
required, such as the United States, since therequirements for making a "description of themark" in filing documents are limited. In addition,with regard to Word files that are available for
input on the website, some respondents said thatthe styles break up and that it is difficult to tickboxes.
(2) Fee Payment Method
With regard to a fee payment method, there
were many requests for the JPO to collect fees onbehalf of WIPO, for fees that can currently only be
paid to WIPO.
(3) Administrative Processing at WIPO
Although not many things were mentioned
with regard to inconvenience in administrative
processing at WIPO, some pointed out delays inprocedures at WIPO.
(4) Specificity of Indications of Goods andServices
It was revealed that the specificity ofdeterminations of indications of goods andservices at the office of each country is an
obstacle to using the Protocol system. For
example, some respondents think that theProtocol system is frequently used in fields
where indications of goods and services are fixed(pharmaceutical manufacturers, etc.) while it isdifficult to use the Protocol system in the fields
where indications of goods and services are not
fixed(telecommunicationequipment
manufacturers, etc.) because applications areliable to be refused. When a Japanese user files anapplication by using the Protocol system based ona trademark application/registration he/she
4 ●IIP Bulletin 2013 Vol.22

filed/obtained in Japan, he/she files the application
by translating a Japanese indication of goods andservices, which is included in the basic
application, into English. However, many users
expressed the following opinions in this regard.
(1) The JPO determines that goods and services
in Japanese, which are included in the basic
application, and goods and services in English,
which are included in an international application,
are not identical. (2) An indication of goods andservices in English prepared based on the basic
application/registration are not accepted by WIPO,
and a notification of irregularity is issued. (3) An
indication of goods and services in English thathas been accepted by WIPO is not accepted at thenational phase of each designated country after
international registration, and a notification ofprovisional refusal is issued. It thus becomes
necessary to provide a response through a
representative in the designated country, and thecost advantage of the Protocol system therefore
diminishes. (4) There are deviations in theinterpretation of classes among the office of thehome country, WIPO, and the offices ofdesignated countries, and it is necessary to delete
subject goods and services particularly because it
is impossible to change classes at the national
phase of a designated country. In addition, (5)there were opinions concerning a vague anxiety
about whether the intended goods and services
are protected in the scope of protection because
subject matters indicated by an indication of
goods and services differ depending on
differences in countries' commercial tradepractice and culture.
(5) Procedures for Dividing an International
Registration
There was a request for a division systemthat provides early grant of a right only for theregistrable part in cases where a reason forrefusal exists in some goods and services. On theother hand, more than half of those who
responded positively to this also stated that it
would be better if the division system existed as
an option, though there has been no specific casewhere non-existence of a division system becamea problem. No strong need for early introductionof such a system could be comprehended. With
regard to an envisioned division system, as aresult of the interview, many respondents
requested a system under which they would bepermitted to divide goods and services withrespect to each designated country and suchinformation would be reflected on the●

IIP Bulletin 2013 Vol.22

International Register.
(6) Provision of Information Concerning theProtocol System
It was confirmed that Japanese users obtain
information on the Protocol system from the
JPO's website, WIPO's website, or seminars andworkshops. On the other hand, Japanese users
scarcely obtain information from permanent
information sources, such as JPO's website and
WIPO's website, as needed. Therefore, it seems
necessary to devise ways of providing information,
including introduction of a system to provide
registrants with the latest information on the
Protocol system by using a mailing list, etc.
2

Problems to Be Solved for Further
Utilization of the Protocol System byJapanese Users

It was revealed that many Japanese users
still point to the following institutional factors as
reasons that so few of them use the Protocol
system, in addition to the aforementioned
procedural problems: (1) There is a small numberof member countries, and countries in which theywant to file applications have not acceded to theProtocol system; (2) It is necessary to fulfill thebasic requirements; (3) A registration may be
rescinded due to a central attack; (4) A statementof grant of protection is insufficient as proof of aright. These institutional problems are further
explained below.
(1) Expansion of the Member Countries
At present, 88 countries (as of November2012) have acceded to the Protocol system.
Although the number of the member countries
has been on the rise, more than 70% of Japaneseusers stated that they desired further increase in
the number. In particular, many Japanese users
request the accession of Asian countries, which
are major markets for Japanese companies,
including Taiwan, India, Thailand, Hong Kong,
Indonesia, and Malaysia, as well as countries withpromising markets, such as Brazil and Canada.
The current member countries do not necessarily
meet the application need of Japanese users.
Therefore, an appeal for expansion in member
countries in conformity to the need of Japaneseusers is requested.
(2) Basic Requirements
With regard to the basic requirements, it was
revealed that one major constraint is the identity
5 ●of marks or the requirement that an indication of
goods and services is within the scope of thebasic application. In addition, it was also revealed
that there are problems such as the impossibilityof filing an application due to non-existence of abasic application when developing a new productand launching it globally at the same time that itis launched nationally, existence of a priortrademark in Japan, or non-existence ofdistinctiveness in examination in Japan. ManyJapanese users requested abolition of the basic
requirements, and hoped for a system like the one
for PCT international applications, under which
an international application is deemed to be thefirst application and a Japanese applicant specifies
Japan as a designated country, into the Protocol
system when abolishing the basic requirements.
On the other hand, many foreign users said thatthe basic requirements were not particularly
hindering and that there was no problem.
(3) Central Attack
The results of the questionnaire survey
revealed that many Japanese users still consider
central attacks to be the disadvantage of theProtocol system. However, there have actually
been very few cases in which an international
registration of a company is rescinded due toanother company's action. The majority of central
attacks occur because an amendment, etc. madein the examination process of a basic application
filed in Japan affects an international registration
when an applicant files that international
application through the Protocol Route based on
the application filed in Japan. In addition, mostJapanese users do not consider a central attack to
be a method of rescinding other companies'
international registrations. Moreover, many
Japanese users said that there is an adverse
effect—the result of an examination in Japan canaffect an international registration that is part ofan effort to file in each country—and that thiseffect is larger even in consideration of theexistence value of a central attack as such amethod. Many Japanese users said that theywanted to have the scope of rights defined withan early examination for domestic applications
that will become the basis of applications basedon the Protocol Systems. This is because mostcentral attacks actually occur because anamendment, etc. that was made in theexamination process of a basic application canaffect international registrations.
On the other hand, in the interview survey
with foreign users, more cases were mentioned in●which a foreign user actually rescinded anothercompany's international registration at once byusing the central attack system. In addition,
foreign users conduct sufficient searches withregard to their own trademark applications before
filing, and their registrations are thus unlikely tobe rescinded by a central attack. Therefore, someforeign users rather desired the continued
existence of the central attack system as amethod of rescinding other companies' trademark
registration covering multiple countries at once.
(4) Notice of Protection
The issuance of a document to confirm agrant of protection has been desired in the past. It
was confirmed that many Japanese users enjoyed
the effect of a statement of grant of protection inmember countries, because issuance of astatement of grant of protection by a designatedcountry has become obligatory in recent years. It
was revealed that a statement of grant ofprotection was used as a document to confirm the
grant of protection in a designated country, an
in-house management document, or a proof ofregistration at the time of using a trademark.
However, it has been frequently reported that, insome countries, a certificate of registration
issued by the government is required as a
document written in the official language of thecountry at the time of exercising rights. ManyJapanese users thus requested a certificate ofregistration for the purpose of confirming goods
and services for which protection was granted.
Moreover, some Japanese users desired theunification of formats of a statement of grant ofprotection in the form of including a statement ofgoods and services, so as to make it easy tounderstand the content of rights finally protectedin each country.
With regard to foreign users, many U.S. andSouth Korean users hoped for issuance of acertificate of registration separately from astatement of grant of protection, in the samemanner as Japanese users.
3

Problems Unique to Cases Where a
Foreign User Files an Application in
Japan by Using the Protocol System

The following were cited as problems that
occurred when a foreign user filed an applicationby using the Protocol system while specifying
Japan as a designated country: (1) The fee
payment method based on the two-part payment
system is cumbersome; (2) Special provisions
6 ●IIP Bulletin 2013 Vol.22

concerning the period for amendment become an
obstacle to responding to a notification ofprovisional refusal; (3) Provision of information
on procedures in Japan as a designated country toforeign users is not sufficient.
(1) Two-Part Payment System
These questionnaire and interview surveys
did not provide us with very many cases where aregistration was actually rescinded due to failure
to pay the second part of the individual fee.
However, representatives who provide services
as a representative in a designated country
pointed out that the system was still notcommonly recognized among foreign users,though they take measures such as providing
explanations of the system to foreign users andreminding foreign users of the payment
procedures after a decision of registration has
been rendered.
In addition, foreign users also requested
introduction of a system that emphasizes ease of
the Protocol system, including changing from thetwo-part payment to a lump-sum payment.
(2) Special Provisions Concerning the
Period for Amendment
When filing an application through theProtocol Route while specifying Japan as adesignated country, the period for submitting awritten amendment to the JPO in response to a
notification of provisional refusal is limited tothree months (the period can be extended by one
month by filing a request for extension).
Therefore, a representative in a designatedcountry cannot submit a written amendment to
the JPO after this period passes, and it isnecessary to make an amendment by submitting arequest for the recording of a limitation to WIPO
via the applicant (or a representative in the homecountry). Many foreign users pointed out that thisprocedure was cumbersome. There were many
requests for abolition of the special provisions
concerning the period for amendment and grant of
the period for amendment in the same manner as
ordinary domestic applications.
(3) Provision of Information to Foreign
Users
With regard to the application of the main
paragraph of Article 3, paragraph (1) of theTrademark Act, which was put in force on April 1,
2007 (documents, etc. which should be submitted
for examination to confirm use of a trademark or
intension to use a trademark), many foreign users●

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said that it was difficult to understand the way ofcounting similar group codes. In addition, there
were many requests for strengthening thetransmission of information in English from the
JPO, including information concerning said
system, and improvement of an English version of
the website for searches.

Ⅴ Conclusion
Through this research study, we studied
problems that arise when using the Protocol
system, as identified by both Japanese users andforeign users (while specifying Japan as adesignated country) from both procedural andinstitutional perspectives; and we considered
improvements for these problems and a Protocol
system that is easier for Japanese and foreign
users to use.
As procedural problems, many Japaneseusers hope for realization of an on-line application,
simpler and easier fee payment procedures, and asystem that makes it possible to choose the JPO
as a location to which an applicant submits
procedural documents. Therefore, it is hoped that
discussions will be held on the possibility of theirintroduction in the future. Furthermore, thisresearch study revealed that the specificity ofindications of goods and services at the office ofeach country was an obstacle to using theProtocol system. We hope that these problems
will be solved through expansion of a list of
indications of goods and services acceptable tomultiple countries and active provision of
information concerning indications of goods andservices acceptable to each designated country.
While the aforementioned procedural
problems were revealed, it was also revealed thatproblems peculiar to the Protocol system werestill significant obstacles to using the Protocol
system. In particular, a main cause of the sluggish
ratio of use is the fact that countries in which
Japanese users are interested, mainly, Asian
countries, have yet to accede to the MadridProtocol even though the number of member
countries has been on the rise. Therefore, the
JPO is expected to continue to support suchcountries' efforts for accession thereto. In
addition, it was also confirmed that fulfillment of
the basic requirements and likelihood of a central
attack were still significant obstacles to using theProtocol system. Therefore, it is hoped that
continued discussions will be held in Japan andabroad with the aim of realizing a system that iseasy for Japanese users to use. The system for a
7 ●statement of grant of protection was evaluated as
helping to confirm registrations because anissuance of a statement of grant of protection wasmade obligatory. However, it was also revealed
that many users had concerns about theeffectiveness of exercising rights based on astatement of grant of protection. Efforts will bemade to ensure that a statement of grant ofprotection is appropriately recognized as proof ofa right in the member countries, and it is hopedthat discussions will be held toward further
improvements, including a mechanism whereby
the content of a right can be more easily
understood, such as making a description of
goods and services finally protected.
With regard to problems that occur when aforeign user files an application in Japan by using
the Protocol system, it was revealed that two-partpayment and special provisions concerning theperiod for amendment had not been sufficiently
recognized by foreign users as systems peculiar
to Japan and that those systems were considered
to be cumbersome. Therefore, it is hoped that
discussions will be held on systems that are truly
desirable for foreign users, including making
lump-sum fee payment possible and applying
special provisions on the period for amendment tosuch applications in the same manner as ordinary
domestic applications.
It is hoped that the JPO will lead discussions
toward improvements with regard to the
problems indicated in this research study and that
continued discussions will be held towardrealizing a more user-friendly system among thepatent offices of the member countries andrelated organizations, such as WIPO.
(Senior Researcher: Hidehiko NAKAJIMA)●

8 ●IIP Bulletin 2013 Vol.22