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Trademark Rights Worldwide



If a trademark is registered in one country (if a trademark right is held), is it protected abroad as well?

 Having a trademark registered (holding a trademark right) in a country does not automatically mean that the trademark is protected abroad.
 The trademark right is only valid in that country.
 Therefore, it is necessary to register the trademark in any countries that you want the trademark right protected in.



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Routes to obtaining trademark rights abroad

 There are 3 main routes, which are listed below.

1. Directly filing an application in a country
2. Filing an application for international registration (Madrid Protocol)
3. Filing an application for a European Union Trade Mark (EUTM)

1. Directly filing an application in a country

 You can directly file a trademark application in the country where you wish to obtain a trademark right.




* This method is inexpensive if you are seeking trademark rights in only a few countries.
* Since this involves filing through a local agent in each country, you can receive the most up-to-date information about Trademark Law in each country.



* This method requires use of a local agent in each country, and is therefore expensive if you are filing in many countries.
* The application filed in each country must use an accepted language of the country and adhere to the various filing procedures of the country.
* Management of the trademark must be performed individually for each country.


2. Filing an application for international registration (Madrid Protocol)

 A trademark application can be filed simultaneously in several countries (contracting countries or member countries) through the Office of Origin *¹, based on either a mark that has already been registered ("basic registration"), or applied for, but not yet registered ("basic application").

*¹the Office of Origin:
The office of a contracting country with which a basic application was filed or by which a basic registration was granted.

 The "Madrid Protocol" is an international treaty establishing an international trademark registration system, and has 98 countries as signatories as of November, 2016.
 An applicant can decide which of these countries a trademark right is sought in.




* Decreased cost
  As long as the applicant does not receive a response that the trademark cannot be registered in the designated countries (which are selected by the applicant), there is no need to use a local agent. Therefore, this is less expensive than filing directly in each country.
* Simpler application procedure
  Applications can be filed simultaneously in each member country selected by the applicant by filing just one application with the Office of Origin.
  The application can be filed in English, regardless of which countries are selected.
* Faster examination
  If an Examiner in a designated country rejects the trademark registration application, the examiner must issue this rejection within 18 months of receiving notification of the application from the International Bureau. Therefore, a judgment is quickly made as to whether the trademark right can be obtained.
* Simpler rights management (unified management)
  After a trademark is registered, procedures such as renewal or change of name can be handled for every country at once through the Office of Origin.



* Central attacks
  The international registration can be revoked and protection can be lost in every designated country if, within 5 years of the international registration, the basic application is rejected or the basic registration is terminated.
  In such a case, the international registration can be converted to several individual applications for each country, but this requires fees for the local agent in each country.
* Limitations
  The international application must be the same as the basic application or the basic registration.
  The designated goods or services must also be the same as, or of a narrower scope than, the designated goods or services of the basic application or registration.


3. Filing an application for a European Union Trade Mark (EUTM)

 In the European Union Trade Mark (EUTM) system, a single application that has passed the examination process can obtain a trademark right that is effective in every member country of the EU (28 countries as of June, 2016).
 By filing a single application with the European Union Intellectual Property Office (EUIPO) or the Patent Office of an EU member country, the application can be filed in every EU member country.




* Decreased cost
  An application can be filed in each EU member country by filing a single application with a single local agent, and is therefore less expensive than directly filing an application with each country in the EU.
* Simpler application procedure
  Applications can be filed in all of the EU member countries using a single application.
* Simpler rights management
  After a trademark is registered, procedures such as renewal or change of name can be handled for every country at once.
* Easy to avoid revocation based on disuse
  As long as the trademark is used in even 1 EU country, the trademark registration will not be revoked due to disuse.



* The effect of rejections
  If a trademark application is rejected in even 1 EU country and this rejection cannot be overcome by a Written Opinion or Amendment, registration will not be granted.
  In such a case, the application can be converted to several individual applications for each country, but this requires fees for the local agent in each country.
  Furthermore, if the registered trademark is invalidated or revoked in even 1 EU country, the trademark rights will be lost in all other EU countries as well.
* Limitations
  It is impossible to selectively apply to only designated EU countries from among the entire EU.
* Examination
  As a rule, the examination does not take into consideration "comparative reasons for rejection," such as whether the trademark of the application is similar to a trademark of an application filed earlier by someone else.
  Therefore, if someone else has previously applied for a similar trademark, an objection will be raised that the registration should not be accepted, or the applicant could end up being sued for infringement even if the trademark is successfully registered



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Local agents

 It is usually necessary to file through a local agent when filing an application abroad.
 This is due to a rule that someone who does not have an address in the country in which they are filing cannot file without using a local agent.
 When filing an international registration application (Madrid Protocol), it is possible to file on your own. However, if you receive a rejection to your trademark application after filing, it is necessary to use a local agent to argue against the rejection.
 When seeking the assistance of a local agent, there are of course fees that must be paid to the agent. The specific fees depend on the country and the local agent.



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Priorities (for trademarks)

 When claiming priority based on the Paris Convention, if a trademark registration is filed in Japan (on March 22, for example), and an application for the same trademark is filed in Korea ( on June 11, for example) within 6 month of the Japanese filing, the Korean application will be considered to have been filed on the date of the Japanese filing (March 22).
 Let us assume that someone else files a trademark application having the same content on May 28.
 In Korea, when applications for trademarks having the same content are filed, a trademark registration is granted to whoever filed first.
 The actual filing date of the above Korean application is June 11, and so if priority is not claimed the application filed on May 28 will be treated as having been filed first. As a result, only the person who filed the application on May 28 will be granted a trademark registration.
 However, claiming priority will result in the application filed on June 11 being treated as if it were filed on March 22. Therefore, the person who filed the Japanese application and the corresponding Korean application on June 11 will be the only one to receive a trademark registration.
 Priority can be claimed between any countries adhering to the Paris Convention, which currently includes over 170 countries.



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Important terms and meaning in trademarks



Principle of registration and principle of use

  In countries that have the "principle of registration," a trademark right is create by registering a trademark. Japan has the principle of registration.
  In countries having the "principle of use," a right is created when a trademark is actually used, and the protection of this trademark can be strengthen through registration.

Principle of first-to-file and principle of first-to-use

  When there are multiple trademark applications filed that have "identical" or "similar" content, there are two systems for resolving this.
  -> In countries having the "principle of first-to-file," registration is granted to whoever filed the application first. Japan has the principle of first-to-file.
  -> In countries having the "principle of first-to-use," whoever started using the trademark first is granted the right and the registration.

Absolute reasons for rejection and comparative reasons for rejection

  An "absolute reason for rejection" is based on the inherent content of a trademark application, and is issued in cases where the trademark is not "distinct" or the trademark is similar to a country's flag, for example.
  Such rejections are referred to as "absolute" because they are unrelated to other trademarks.
  A "comparative reason for rejection" is based on reasons such as the trademark being similar to a trademark previously registered to or applied for by someone else, or the trademark being possibly confused with a famous trademark of someone else.
  These rejections are referred to as "comparative" because they depend on the trademarks of others.
  The examination performed in Japan takes both types of reasons into consideration. In the EUIPO, however, the examination is only for "absolute reasons for rejection."

Consent system

  In countries having the "consent system," even if a trademark application is rejected based on a "comparative reason for rejection," the trademark can be registered if the right holder of the registered trademark used in the comparison submits a document consenting to the registration of the trademark.
  There are, however, countries that will not necessary allow such a trademark to be registered even if a consent form is received.
  Japan does not have a consent system.

Disclaimer system

  Under the "disclaimer system," if an overall trademark is "distinctive" despite a portion thereof not being "distinctive," the trademark can be registered on the condition that the applicant cannot sue someone else for trademark infringement if they use the portion that is not "distinctive."
  Japan does not have a disclaimer system.

Objections prior to granting of rights and objections after granting of rights

  In countries that accept objections prior to granting of rights, a trademark can be objected to, i.e. an argument can be made that the trademark should to be registered, prior to the trademark actually being registered.
 If the objections are accepted, the trademark is prevented from being registered.
  In countries that accept objections after granting of rights, a trademark can be objected to, i.e. an argument can be made that the trademark should be revoked, after the trademark is registered.
 If the objections are accepted, the registration is revoked.
  Japan accepts objections after granting of rights.

Multi-class applications

  "Classification" refers to a method of categorizing goods or services according to a prescribed standard.
  In countries that accept multi-class applications, two or more classes can be designated in one application (one application document).
  In countries that do not accept multi-class applications, a separate application must be filed for each class.
  Japan accepts multi-class applications.


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