Normally, one would consider using the Madrid Protocol to obtain trademark registrations abroad.
However, the Madrid Protocol is not always the best method.
Advantages of Direct Filing
1. It is less expensive to submit an application directly in the nation where protection is desired if there are few specified nations.
In general, if you are requesting rights for more than five countries, it is preferable to employ the Madrid Protocol; however, this is only the case when the legal charge is standard.
If you hire an attorney like us to represent your work inexpensively, the fees will be less expensive.
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２．Direct filing is often faster to obtain rights.
The Madrid Protocol is centrally administered, so it is hassle-free but takes longer to examine (about 18 months). On the other hand, you can get trademark rights as soon as two months if you file directly. This is because a fast-track system is available.
In roughly two months, you can get rights in Japan by requesting an accelerated examination.The trademark will be registered within six months at the latest.
３．Obtain advice from a local trademark attorney and obtain stronger rights.
The chance of trademark registration is enhanced with the accurate advice of a local representative, even in situations when obtaining rights is challenging because of the existence of similar prior registered trademarks.
If an amendment is made, it can only be made within the scope of the original application, but the right is stronger because the amendment can be made without reducing the scope excessively.
In addition, local representatives are up-to-date on the trademark laws of the country in which they work.
For example, Japan introduced a new Consent system in April 2024. Only a local attorney can properly understand these new systems.
We can search for and negotiate with similar prior registered trademark owners in Japan.
Disadvantages of Direct Filing
As mentioned above, direct filing is advantageous in situations where there are few specified countries and an agent who can handle the work for a reasonable fee; nonetheless, it should be emphasized that “country-by-country management” might be a burden.
Trademark rights can be maintained semi-permanently after 10 years by paying a renewal registration fee, but if you forget to pay the fee, you will lose your rights.
As a result, you need to take extra care to meet the payment deadline.
Conclusion
As we have seen above, both Madrid Protocol applications and direct applications have their own merits and demerits.
Instead of simply deciding to file a Madrid Protocol application because there are many countries in which to file an application, you should consider the advantages of obtaining rights at an early stage of the application process.
In addition, if the rights are important, you should have a local agent conduct a search before filing the application. This is because, considering the possibility of reducing the rights by amendment, it is necessary to consider negotiations and trademark changes in advance.