Protecting Your IP in Overseas Markets
As IP protection is territorial, to protect your IP and trade mark outside of the UK you will usually need to apply separately in each country that you would like to have protection in.
If your protection only applies within the UK, other companies may be able to use your designs or content abroad without infringing on your rights, and they will not be liable for legal action.
If exporting your goods or services abroad is part of your future business plans, then you may want to consider registering your IP rights abroad in your target markets.
Certain countries may allow the extension of your UK protection once local formalities have been completed.
International Trade Mark Registration
For international registration of a trade mark in Japan, two main options exist: the first is to file a trademark application directly with the Japanese trademark office, or you can apply through the Madrid Protocol which is administered in Geneva by the World Intellectual Property Organisation (WIPO).
You must submit your application to WIPO to register a trademark in Japan through the UK Intellectual Property Office who will then submit it on your behalf. You cannot submit the documentation directly to WIPO. An international application form can be downloaded at www.wipo.int/export/sites/www/madrid/…/form_mm2-editable1.pdf along with notes on how to complete the form at www.wipo.int/export/sites/www/madrid/en/…/form_mm2_inf.pdf
Fill in the information requested in the form and select Japan as the designated country where you are seeking international trade mark protection. To give an idea of the fees involved, as of March 2014, a colour trade mark was CHF 903 (approx. GBP 612) + GBP 40 IPO charge for submission + Japan country charges of CHF 114 (GBP 77) for one class of goods/services and CHF 87 (GBP 59) per additional class. Please note that these costs are indicative and are subject to change.
Any questions about UK or international trade mark filings can be sent to firstname.lastname@example.org or you can call the Intellectual Property Office direct on +44 (0)300 300 2000. Contact details for the Japan Patent Office (JPO) can be found at www.jpo.go.jp.