Designating Japan via the Madrid System: Procedure, Refusals and Costs

"We already have an international registration through WIPO. Should we just add Japan?" "We received a provisional refusal from Japan — what now?"

The Madrid System lets you extend a trademark from your home country to Japan with a single international application. It is convenient, but there are Japan-specific points that many applicants only discover when a refusal arrives. In this article, Japanese Patent Attorney Toru Kano of BrandAgent explains how a Madrid designation of Japan works from the foreign applicant's point of view, and when filing directly in Japan is the better choice.

*Last updated: October 2026. Fees and procedures change, so check WIPO and the JPO for the latest information.

1. What is a Madrid designation of Japan?

Under the Madrid Protocol, you file one international application through your home trademark office (for example, CNIPA in China, KIPO in Korea or IPOS in Singapore), based on your home application or registration. WIPO records the international registration and notifies each country you designate. Japan is a member, so you can designate Japan either in the original international application or later through a subsequent designation.

Once WIPO notifies the JPO, your designation is examined in Japan under Japanese law, just like a national application. The international registration itself does not guarantee protection in Japan.

2. Benefits of the Madrid route

• One application, many countries: one form, one language and one payment to WIPO.
• No local attorney at filing: if Japan raises no objection, the mark can be protected without appointing a Japanese attorney.
• Central management: renewals, changes of name/address and assignments can be recorded at WIPO for all countries at once.
• Countries can be added later through a subsequent designation.

3. How the JPO examines a designation of Japan

The JPO applies the same substantive examination as for direct Japanese filings: distinctiveness, conflicts with earlier Japanese marks (including marks that sound the same in Japanese), and whether the goods and services are clearly described. Japan has declared an 18-month period for notifying refusals, counted from WIPO's notification of the designation.

In our experience, a very common reason for refusal of Madrid designations is the description of goods and services. Wording accepted by WIPO or by your home office is often judged too broad or unclear in Japan (Article 6(1) of the Japanese Trademark Act). Another frequent ground is an earlier similar mark in Japan (Article 4(1)(xi)).

4. Provisional refusal: you will need a Japanese attorney

If the JPO finds a problem, it sends a Notification of Provisional Refusal through WIPO. Under Japanese law, a holder with no domicile or office in Japan cannot respond to the JPO directly. The response — an amendment of the goods/services, a written argument or both — must be filed through a representative in Japan, i.e. a Japanese patent attorney.

For a refusal based only on unclear goods, an amendment that rewords the goods in Japanese practice usually solves it. You can also limit the goods through WIPO (Form MM6), but a limitation alone may not address the examiner's specific objection, so it is safer to have a Japanese attorney review the refusal first. BrandAgent's fee for a response to an Office Action is JPY 25,000 (excluding tax, where applicable).

5. Dependency and "central attack"

For five years from the international registration date, the international registration depends on your home (basic) application or registration. If the basic mark is refused, withdrawn, cancelled or narrowed during that period, the international registration — including the protection in Japan — is cancelled or limited to the same extent. This is called "central attack."

If this happens, you can file a national application in Japan within three months of the cancellation, for the same goods, and keep the original date (transformation). This requires a Japanese attorney and payment of Japanese national fees, so it is worth knowing in advance.

6. Costs

For a Madrid designation, fees are paid to WIPO in Swiss francs: the basic fee and an individual fee for each designated country, including Japan. Japan's individual fee depends on the number of classes. For designations made on or after April 1, 2023, Japan's individual fee is paid in full at the time of designation (the former two-part payment was abolished). Because WIPO fees and exchange rates change, please use WIPO's online Fee Calculator for an exact figure rather than relying on amounts quoted in articles.

On top of WIPO fees, budget for a possible provisional refusal in Japan: the Japanese attorney's response fee, and in some cases translation of the refusal. Home-office handling fees and your home attorney's fees are separate.

Madrid designation vs. direct filing in Japan

Madrid is efficient when you protect one mark in many countries and Japan is one of them. When Japan is a key market, or you need rights quickly, direct filing often costs less once a likely refusal response is factored in. Paris Convention priority (six months from your home filing) is available for both routes.

For reference, BrandAgent's fees for direct filing are JPY 25,000 per class at filing and JPY 25,000 per class at registration (excluding tax, where applicable), and the prior search is free if you instruct us to file.

FAQ

• Q. Do we need a Japanese attorney to designate Japan via Madrid?
  A. Not at filing. But if the JPO issues a provisional refusal, the response must be filed through a Japanese attorney.
• Q. How long do we have to respond to a provisional refusal from Japan?
  A. Three months from the date of the notification. Extensions can be requested, but contact a Japanese attorney early.
• Q. How much is Japan's individual fee?
  A. It depends on the number of classes and changes from time to time. Please use WIPO's Fee Calculator for the current amount.
• Q. What happens to Japan if our home trademark is cancelled?
  A. Within five years of the international registration, Japan is also cancelled. You can transform it into a Japanese national application within three months to keep the original date.
• Q. Can you handle the response in English or Chinese?
  A. Yes. We report and communicate in English and Chinese.

Summary

Related articles

• How Much Does a Japanese Trademark Cost? Fees for Foreign Applicants (2026)
• Japanese Trademark Office Action (Notice of Reasons for Refusal): Common Grounds and How to Respond
• How to Register a Trademark in Japan: Step-by-Step Guide for Foreign Applicants [2026]
• Japanese Trademark Renewal: Deadlines, Official Fees and Procedure for Foreign Owners