Based on frequently received inquiries, we have summarized below the key considerations when designating Japan in a Madrid Protocol application.

1. Abolition of the Two-Step Payment System

Previously, the Japan Patent Office (JPO), as a designated Office, adopted a “two-step payment system,” under which the individual fee (corresponding to the filing and registration fees) was paid in two stages: at the time of filing of the international application and at the time of registration in Japan.

However, for international applications filed on or after April 1, 2023, this has been changed to a “lump-sum payment system,” requiring a full payment of the individual fee at the time of filing.

 

A copy of the decision of grant of protection is issued as a Statement of Grant of Protection and is forwarded to the applicant via the World Intellectual Property Organization International Bureau (WIPO).

There has been no change in the delivery method of the original registration certificate. If no provisional refusal is issued and no Japanese representative has been appointed, the certificate will be sent directly from the JPO to the holder.

2. Failure to Respond to a Provisional Refusal

A provisional refusal is issued by the JPO and transmitted to the international representative via the WIPO.

If no response is filed within the prescribed period[1], a final decision of refusal will be issued.
  Against such a final refusal, it is possible to file an appeal (trial against refusal) within four months from the date of service of the decision (for overseas applicants).

 

Please note that, in all cases, failure to meet a deadline cannot be excused on the grounds that “the notification from the JPO or WIPO was not received.”

In addition, the JPO operates under the practice of issuing provisional refusals within 12 months from the date of notification of designation. Accordingly, we recommend ongoing monitoring of the status, for example, via Madrid Monitor, as appropriate.

 

3. Notifications Regarding Oppositions and Trial Proceedings

The method of service of notifications relating to oppositions and trial proceedings depends on whether a Japanese representative has been appointed.

 

(1) Where a Japanese representative has been appointed

Non-use cancellation trials
Communications are managed through the Japanese representative. The JPO will contact the representative by email to confirm:

• that a non-use cancellation action has been filed; and
• whether the representative will accept the appointment.
  Upon submission of the Power of Attorney, all subsequent notifications will be sent to the representative.

 

Opposition proceedings
The JPO will review the Power of Attorney submitted during the provisional refusal stage. If the scope of authorization is deemed sufficient, notifications will be sent directly to the Japanese representative without further confirmation.

 

(2) Where no Japanese representative has been appointed

(e.g., where the mark proceeds to registration without provisional refusal)

Notifications will be sent directly to the holder of the international registration by international mail. Thereafter, the WIPO will notify the international representative that such communication has been sent to the holder.

 

(3) Treatment of “Non-Delivery” (No Relief Available)

• The JPO adopts a dispatch-based system, under which service is deemed effective on the date of dispatch, and deadlines are calculated from that date.
• For international mail, the JPO confirms delivery either by:
  (i) receipt of a delivery report from the postal service, or
  (ii) tracking via the postal service website,
  and records the dispatch date accordingly.
• If mail is returned undelivered, it will be resent. If returned twice, service is deemed to have been affected.
• Returned documents are sent together with subsequent communications to ensure eventual delivery.

Accordingly, no relief is available on the grounds of non-delivery.

 

4. Practical Recommendations

• Where no Japanese representative has been appointed, we recommend establishing a robust monitoring system, including regular checks via Madrid Monitor. It is also advisable to inform the holder in advance that communications may be sent directly to them.

 

• From a risk management perspective, appointing a Japanese representative is strongly recommended, as this ensures that all communications from the JPO are centrally received and effectively managed.

[1] By filing a request within the response period, a one-month extension may be obtained. A further request allows for an additional two-month extension.