Madrid Protocol in Japan: What to Expect After the Provisional Refusal

Receiving a Notification of Provisional Refusal from the JPO via WIPO can feel alarming, but the road to registration is longer than many foreign counsel expect. This article maps out the procedural stages that follow a Provisional Refusal under the Madrid Protocol designation of Japan, with realistic timing and decision points.

1. Stage 1: Provisional Refusal Notification

The JPO issues the Notification of Provisional Refusal — typically within 12-18 months of the IR designation date — and transmits it to WIPO. WIPO records and forwards it to the holder's representative of record (or the holder directly if no representative is appointed).

Key points:

• The Notification cites specific Articles of the Japan Trademark Act
• Cited prior marks are listed with registration numbers
• The response deadline runs from the date stated on the Notification

2. Stage 2: Response Filing (Within 3 Months)

A Japanese trademark attorney must be engaged to file the response. The standard deadline is 3 months from the Notification date, with a 1-month extension available on request (filed before the original deadline expires).

The response is a single submission — typically titled 意見書 (Argument), sometimes accompanied by a 手続補正書 (Amendment) for specification restriction. Evidence (advertising materials, sales data, market surveys) is attached if relied upon.

3. Stage 3: JPO Re-examination (3-6 Months)

After the response is filed, the JPO examiner reviews the arguments and evidence. Re-examination typically takes 3-6 months, though complex cases may extend to 9 months.

Three possible outcomes:

4. Stage 4 (if Successful): Statement of Grant of Protection

For Madrid designations that overcome the Provisional Refusal, the JPO issues a Statement of Grant of Protection to WIPO. WIPO records protection of the international registration in Japan. The mark is then protected in Japan retroactive to the IR designation date — there is no gap in protection caused by the refusal exchange.

After grant, the IR is renewable through WIPO every 10 years. Renewal in Japan is automatic with the IR renewal (no separate Japanese renewal action required).

5. Stage 5 (if Refusal Issued): Appeal to JPO Trial Board

If the JPO issues a final Decision of Refusal, the holder may appeal to the JPO Trial Board within 3 months. The Trial Board conducts a de novo review and may reverse the examiner's decision. Trial Board proceedings typically take 6-12 months.

If the Trial Board upholds the refusal, further appeal lies to the IP High Court, with possible final appeal to the Supreme Court. We handle the full appeal chain when economically justified.

Frequently Asked Questions