Welcome to APEX Patent Solutions.

We are an international patent & trademark firm in Japan, helping overseas companies and entrepreneurs secure trademark protection in Japan—including through the Madrid Protocol (international trademark) route.

This guide explains how designating Japan under the Madrid System works, when you’ll need a local representative (Benrishi), what to expect from JPO examination, and how this route compares with direct filing.

What Is the Madrid Protocol (International Trademark) and How Does It Apply to Japan?

The Madrid Protocol lets you file a single international application via WIPO and designate multiple countries, including Japan (JPO), to seek trademark protection.

Key points for foreign applicants:

  • You must have a basic application or registration in your home IP office (the “office of origin”).
  • When you designate Japan, the Japan Patent Office will examine your mark under Japanese Trademark Law (first-to-file, absolute/relative grounds, Nice Classification).
  • If the JPO raises no objections, protection in Japan is granted via the Madrid system.
  • If the JPO issues a Provisional Refusal, you must appoint a Japanese representative to respond locally.

Want a step-by-step overview of Japan’s domestic process? See How to Register a Trademark in Japan (Step-by-Step Guide) and How to Register a Trademark in Japan as a Foreign Business.

Madrid vs. Direct Filing in Japan: Which Should You Choose?

Madrid Protocol (Designate JP)

  • One WIPO filing, centralized portfolio management (recordals/renewals via WIPO).
  • Local agent not required unless the JPO issues a Provisional Refusal.
  • No separate “national phase entry” formality like PCT; WIPO forwards to JPO.

Direct Filing (Paris Route) with the JPO

  • File directly in Japan (can claim Paris priority).
  • Japanese representative required if the applicant has no Japanese address/office.
  • Useful for tailored specifications and strategic amendments from day one.

Considering cost and timing? See Trademark Registration Cost in Japan: Fees for Foreign Amazon Sellers for a breakdown of official and professional fees.

What Happens After You Designate Japan?

  1. Formalities check & publication
    Your international registration/JP designation is recorded and published.
  2. Substantive examination by JPO
    The JPO examines:
    • Absolute grounds (distinctiveness, public order, non-descriptive, etc.)
    • Relative grounds (conflicts with earlier Japanese marks)
    • Classification per Nice (Japan accepts multi-class filings under one application).
  3. Outcome
    • Grant / Statement of Grant of Protection: protection in Japan is confirmed.
    • Provisional Refusal: JPO objects (e.g., descriptiveness or conflict). You must respond through a Japanese representative.
  4. Opposition (post-grant)
    After grant, third parties can file oppositions within a limited period. If sustained, protection can be cancelled in whole/part.

Responding to a JPO Provisional Refusal (Madrid → Japan)

If you receive a Provisional Refusal, action is time-sensitive:

  • Deadline: You must file a response/argument and/or amendment within the period set out in the refusal (calculated from the day after the JPO’s dispatch date).
  • Extensions:
    • Before expiry: 1-month extension available (fee applies: JPY2,100).
    • After expiry (grace): 2-month extension available (fee applies: JPY4,200).
  • Representation: A Japanese trademark attorney (Benrishi) is required for all responses, amendments, and appeals.

Possible response strategies include restricting goods/services, overcoming descriptiveness, or arguing coexistence. If the examiner maintains refusal, you may file an appeal to the JPO’s Appeal Board.

Core Features of the Japanese Trademark System (What Foreign Applicants Should Know)

  • First-to-file: Earlier application dates prevail.
  • Examination system: Substantive examination for absolute/relative grounds.
  • Multi-class filing: One application can cover multiple classes.
  • Non-traditional marks: Japan protects word, device, combined, and certain non-traditional marks (e.g., 3D, color per se(color alone as a trademark), sound, motion, position, hologram) when distinctiveness is met.
  • Renewal: Protection is 10 years from registration and renewable every 10 years.

Need to assess risk before filing? Contact us about a Japan trademark search and clearance. You can also review our Trademark Resources.

Specification (Goods/Services) Tips When Designating Japan

  • Keep the scope aligned with your basic mark but tailored for Japan.
  • Use clear Nice terms accepted by JPO; vague wording can trigger objections.
  • For Madrid filings, consider using limitations per country to avoid avoidable objections in Japan.

Timelines: How Long Does It Take?

  • Examination start: Typically several months after designation reaches JPO.
  • Overall: Many cases complete in 6–12 months, but the timeline varies with workload of JPO examiner, objections, and appeals.

(For a fuller timeline by stage and what to expect if refused, see How to Register a Trademark in Japan (Step-by-Step Guide).)

Do You Need a Japanese Representative?

  • No, if your JP designation proceeds smoothly without a refusal.
  • Yes, if the JPO issues a Provisional Refusal or you must file arguments/amendments/appeals, record assignments, or handle enforcement.

We act as your local representative (Benrishi) to handle refusals, appeals, recordals, and enforcement. Please feel free to contact us if you need assistance.

Amazon Sellers: Why JP Designation Matters

If you sell or plan to sell on Amazon.co.jp, a Japanese trademark (registered or pending) is typically required for Amazon Brand Registry in Japan. Madrid designation of Japan can be a fast, centralized way to secure rights.

Learn more:

Cost Considerations

Your total outlay includes WIPO fees (basic, complementary/individual fees) and, where needed, Japanese attorney fees for refusals, appeals, or recordals. For a practical cost view (JP official fees + professional fees), see:

Common FAQs

Q1. Can I designate Japan with a logo-only (image-only) mark?
A1. Japan accepts word marks and device/combined marks; ensure your representation aligns with the mark as filed/registered at the office of origin.

Q2. Can I rely on a consent letter to overcome a citation?
A2. Yes. Since April 1, 2024, Japan has introduced a consent system. If the prior trademark owner agrees and you can show no likelihood of confusion, the JPO may allow registration despite a citation.

Note: The JPO still reviews each case carefully, and even after registration, safeguards exist (e.g., confusion-prevention indications, cancellation for bad-faith use).

Q3. What happens after protection is granted?
A3. Protection is published; third parties may oppose within the statutory window. After registration, monitor and renew every 10 years.

Q4. Do I need translations for Japan under Madrid?
A4. WIPO communications are in your chosen Madrid language, but responses to JPO (e.g., to refusals) must be filed in Japanese by a local representative.

How APEX Patent Solutions Can Help

  • Madrid (JP) Provisional Refusal handling: arguments, amendments, appeals.
  • Clearance searches and specification optimization for Japan.
  • Recordals (name/address change, assignment, license recordal) and renewals.
  • Brand enforcement in Japan (infringement watch, warnings, takedowns).

Ready to protect your brand in Japan via the Madrid Protocol? Get a Free Quote or Contact APEX Patent Solutions for tailored guidance.