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In today's era of increasing globalization of companies, opening physical stores in overseas markets and utilizing cross-border e-commerce have become essential business strategies for many Japanese companies. However, while it is often overlooked when expanding overseas, the most important step in protecting a company's brand is registering trademarks overseas.
Are you thinking that your brand is protected overseas because you have registered your trademark in Japan?
In fact, trademark rights have a principle called territoriality, and trademark rights acquired in Japan are only valid within Japan. In order to use your company's brand name or logo exclusively overseas, you need to file an "international trademark application."
In this article, a patent attorney who is an intellectual property expert will provide a thorough and easy-to-understand explanation of the mechanism, advantages and disadvantages, estimated costs, and procedural flow of international trademark applications, with a focus on International applications based on the Madrid Protocol (MadPro), which are used by many companies. If you are a business owner or someone in charge of intellectual property who is looking to expand overseas, please read this book to the end.
📑 Table of contents of this article
- Why is it necessary to file an "international trademark application" when expanding overseas?
- Two main routes for international trademark applications
- Madpro application mechanism and basic conditions
- Five great benefits of applying for MadPro
- Three disadvantages and points to note when applying for MadPro
- Estimated cost for MadPro application
- Madpro application process and period until registration completion
- Important notes to avoid failure when filing an international trademark application
- Why you should hire a patent attorney
- Summary: To obtain a foreign trademark, contact a patent attorney
1. Why is it necessary to file an "international trademark application" when expanding overseas?
Why is it necessary to spend time and money filing an international trademark application in order to succeed in overseas business? The reasons for this can be summarized mainly into the following three points.
🌍 ① Trademark rights are based on "territoriality" (independent for each country)
Intellectual property rights, including trademark rights, are granted based on the laws of each country, so they are effective only in the country in which they are acquired (territorial principle). If you want to sell a product in the United States, you must register your trademark with the U.S. Patent Office (USPTO), and if you want to sell it in China, you must register your trademark with the China National Intellectual Property Administration (CNIPA), or it will not be possible to protect your brand in that country.
⚠️ ② Risk of business obstruction due to misappropriated application (preemption of trademark)
In recent years, overseas (especially in China and Southeast Asia), there has been a rapid increase in the damage caused by misappropriated applications (trademark trolls), where local third parties register trademarks of famous Japanese brand names, company names, and product names without permission.
If your company's trademark is registered by a third party first, you will not only be unable to export your company's products to that country, but you may also be at risk of being stopped by customs as a counterfeit product or being asked to buy your trademark for an exorbitant amount of money. It is essential to promptly file an international trademark application at the planning stage of overseas expansion.
🛒 ③ Conditions for listing on cross-border EC platforms
Various global e-commerce platforms, including Amazon, require trademark registration in the country of sale as a prerequisite for eliminating counterfeit products and using brand protection programs (such as Amazon Brand Registry). Trademark registration is a powerful weapon for developing a healthy and safe cross-border e-commerce business.
2. Two main routes for international trademark applications
There are two main ways to apply to obtain a trademark overseas: Direct application (Paris route) andMadpro application (Madrid Protocol route).
| Comparison item | ① Direct application (Paris route) | ② MadoPro application |
|---|---|---|
| Application method | Direct application to each country's patent office | Multiple application to WIPO (International Bureau) with one application |
| Language | Applications must be written in the official language of each country | Complete in one language, English |
| Local agent | Required for each country (high cost) | In principle, at the application stageNot required (Cost reduction) |
| Cost | The more countries, the more expensive | Significantly cheaper for more than 3-4 countries |
| Rights management | Management is complicated as it varies by country | Centralized management with WIPO (updated once) |
| Flexibility | Marks and designated products can be changed for each country | Limited to the same content as the basic application in Japan |
| Target countries | Worldwide including Taiwan, Hong Kong, etc. | Member countries only (more than 130 countries/regions) |
3. MadPro application mechanism and basic conditions
In order to use the MadPro application, there are important basic conditions that must be met.
Absolute requirements for MadPro application
Requires "basic application" or "basic registration" with the Japanese Patent Office
When filing a MadoPro application, you cannot immediately apply to WIPO. First, the trademark in question must be applied for or already registered at the Japanese Patent Office. Furthermore, the "trademark mark (letter or logo)" and "designated goods/services" specified in the MadoPro application must completely match or fall within the scope of the basic application/registration in Japan.
When you submit an application for an international application to WIPO via the Japanese Patent Office (office of origin), WIPO conducts a formality examination and registers it in the "International Register." Thereafter, each designated country is notified of the application contents, and a substantive examination is conducted based on the laws of each country.
4. 5 great benefits of MadPro application
If you are considering filing trademark applications in multiple countries, MadPro applications have many advantages over direct applications.
✅ ① Centralization and significant simplification of procedures
Simply create one application in one language (English) and submit it to the Japanese Patent Office. The hassle of searching for local agents in each country and communicating with them individually can besignificantly reduced.
✅ ② Significant reduction in application costs
Since there is no need to go through a local agent in each country at the application stage, there is no need for local agent fees. If you are filing inmore than 3 or 4 countries, in most cases the MadPro application can dramatically reduce thetotal cost.
✅ ③ Reduce operational burden by centralizing rights management
The renewal procedure also allows you to renew the rights of all designated countries at once with one application and payment of fees to WIPO. Changes such as company name changes, address changes, and rights transfers can be completed with a single notification, dramatically reducing running costs and the administrative burden on intellectual property personnel.
✅ ④ The review period is clear (within 12 or 18 months)
In principle, each designated country is obligated to notify the examination results within ``12 months'' or ``within 18 months'' of the notification, and if no notification is received within that period, registration will be automatically granted. Business planning becomes easier.
✅ ⑤ Possible to "post-specify" as your business expands
If the number of new countries in which you do business increases after filing, it is possible to add designated countries to the original international registration by “subsequent designation”. You can easily expand the scope of your rights to the rest of the world.
5. 3 disadvantages and precautions of MadPro application
While there are many advantages, there are also disadvantages and points to note that are unique to MadPro applications.
⚠️ ① Risk of central attack
This is the biggest weakness of the MadPro application. Since the MADOPRO application is dependent on the Japanese basic application, if the Japanese basic application is rejected or the basic registration is invalidated within 5 years from the date of the international registration, the international registration in all designated countries will also be canceled accordingly.
💡 Remedies:Even in the unlikely event that you do so, there is a measure to remedy your rights by switching to direct filing in each designated country through "transformation (change to domestic application)."
⚠️ ② Restricted by the content of basic applications and registrations in Japan
You can only apply for ``exactly the same trademark'' and ``designated goods and services within the same scope'' as the basic application in Japan. If you want to change the logo to match the local language of each country or add services specific to that country, you should consider filing separately directly instead of filing with MadPro.
⚠️ ③ Not available in countries that are not members of MadPro (such as Taiwan)
Although many of the world's major countries are members, there are countries and regions that are not members, even in important locations for Japanese companies, such as Taiwan, Hong Kong, and Argentina. These countries require separate direct filing.
6. Estimated cost for MadPro application
The cost of filing a MadPro application varies depending on the number of designated countries and the number of categories, but the main cost breakdown is as follows.
| Cost item | Summary |
|---|---|
| ① Stamp fee to government office of home country | Flat rate per item 9,000 yen |
| ② WIPO basic fee | Black and white trademark 653 CHF / Color trademark 903 CHF (Swiss Franc denominated) |
| ③ Individual fees for each designated country | Varies depending on the country and number of categories (amount determined for each country such as America, China, etc.) |
| ④ Patent attorney fees (agent fee) | Remuneration for preliminary research, English application preparation, and procedure agency |
💰 Estimated cost simulation
If you are based in Japan and apply for MadoPro in one category in two countries, the United States and China
Actual expenses such as stamp fees
Approx. 150,000 to 200,000 yen
Patent attorney fees
Approx. 100,000 to 150,000 yen
Estimated total amount
Approx. 250,000 to 350,000 yen
*The actual cost will change depending on exchange rate fluctuations. Please contact us for an accurate quote.
💡 Reference:If you apply directly to the same two countries, the local agent fees for each country will be added, which will significantly increase the total cost.
7. MadPro application process and period until registration completion
The MadPro application procedure will proceed in the following steps.
STEP 1
Basic application to the Japanese Patent Office
Apply for the target trademark (not required if already registered)
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STEP 2
International application to the Japanese Patent Office (submission of MM2 application)
Submit an international application (in English) to WIPO through the Japanese Patent Office and pay the fee
▼
STEP 3
Formal examination and international registration by WIPO
Formal examination of application contents and English notation → If there are no problems, it will be registered in the "International Register" and an international registration certificate will be issued
▼
STEP 4
Substantive examination in each designated country
Notification from WIPO to each designated country → Substantive examination based on the domestic laws of each country (examination of the existence of similar trademarks, distinctiveness, etc.)
▼
STEP 5
Grant of protection (examination completed)
Examination pass → Notice granting trademark protection in the country is served → Trademark rights become effective 🎉
From application to examination result: Maximum 12 to 18 months
8. Important notes to avoid failure when filing an international trademark application
🔍 ① Thorough "overseas trademark search" in advance
Even if a trademark is registered in Japan, there are many cases where similar trademarks have already been registered overseas by local companies. If you blindly apply without conducting a trademark search in advance, your application will be rejected at the examination and your costs will be wasted. A highly accurate prior trademark search using national databases is essential.
📝 ② Accurate English translation of specified goods and services
A mere literal translation may result in an irregularity notice due to ``unclear meaning'' in WIPO's formalities examination. Professional know-how is required to select appropriate English expressions that comply with International Classification (Nice Classification).
📬 ③ Response system for notification of reasons for refusal (office action)
If you are notified of reasons for refusal during examination in a designated country, you must submit a written argument based on local law. Since it is necessary to respond through a local agent (local patent attorney), a system that can quickly collaborate with a reliable overseas patent firm is required.
9. Why you should hire a patent attorney
Compared to domestic applications, international trademark applications have language barriers and differences in the legal systems of each country, and require an extremely high level of specialized knowledge. By hiring a patent attorney, you can enjoy the following major benefits:
| Support details | Specific benefits |
|---|---|
| Proposal for optimal application strategy | Analyze the countries you plan to expand into and your budget, and plan a lean strategy to decide which is best, MadPro or direct application |
| Advanced preliminary research | Precisely judge the possibility of registration by making full use of each country's database to prevent intellectual property troubles |
| Use of overseas networks | Even when we receive reasons for refusal in each country, we work with local professionals to accurately refute and obtain rights |
| Outsourcing deadline management | Leave the management of deadlines for complex updates and documents, and let the person in charge focus on the core business |
| Subsidy/grant support | Significantly reduce the cost burden with application support for overseas application support subsidies for small and medium-sized enterprises (JETRO, etc.) |
10. Summary: Contact a patent attorney to obtain a foreign trademark
In order to succeed in doing business in overseas markets and protect your company's important brand, International trademark applications are essential. In particular, MadPro application is a very powerful system in terms of cost reduction and centralization of management, but it requires advance research and advanced procedures in English.
Do you have any questions or requests?
- “Which country should I apply to in my case?”
- "Which is better, MadPro application or direct application?"
- “I would like an estimate of how much it will cost in total”
Start with a free consultation
Our patent office, which is strong in international business, will strongly support your company's global expansion. Leverage our expert knowledge and work with us to build a strong brand strategy to compete on the world stage.
The first consultation is free.
AUTHOR
Takefumi SUGIURA （杉浦 健文）
EVORIX Intellectual Property Law Firm Managing Patent Attorney
Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).
