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Is A Madrid Application the Way To Go in Mainland China?

  • TIME: 2017-07-10 13:47:36
  • HIT: 615

Author: MarciaGaryWest

Many applicants prefer to designate China through a Madrid application over a national Chinese application (in a Madrid application, applicants simply check a box to extend registration to China). However, there are several items to consider.

First, is timing. It usually only takes 12 months to obtain a registration certificate through a national application. Plus, when a mark is officially registered, the China Trademark Office (“CTMO”) automatically issues a registration certificate, which is necessary for any trademark enforcement or Customs protection.

However, it usually takes 18 months to register a mark in China under a Madrid application. Plus, the CTMO does not automatically issue registration certificates for international registrations. The registrant must pay a small additional fee and wait 4-6 months for the certificate.

Next, Chinese applications must have a local agent on record. This is very important when it comes to official notifications. If the CTMO rejects a mark for registration, the applicant only has 15 days after receiving the notification to appeal the decision to the Trademark Review and Adjudication Board (“TRAB”). Without a local agent, Madrid applicants often miss the deadline completely or have very little time to prepare their arguments for appeal.

Most importantly, applicants are often dissatisfied with the scope of protection they receive in China after registering under a Madrid application.

The Madrid application is less strict when it comes to the description of designated goods. In a national application, the CTMO will generally only accept standard goods under the Chinese Classification of Goods and Services. However, in a Madrid application, the applicant can list non-standard goods and services (as long as they are not prohibited in China; i.e. gambling; retail and wholesale services not related with pharmaceutical, veterinary and sanitary preparations); the CTMO examiner will translate the description to Chinese and classify it under the most related standard good or service.

However, there are two major ways that the scope of protection may be limited:

1. When you file a national Chinese application, you get to decide exactly the goods and services you designate (you have control to choose the subclasses that your application covers). However, when you file a Madrid application, the CTMO examiner will translate the items listed on the original application, meaning that your application will only cover the subclasses that the translations fall under. There is always a chance that the examiner translates the designated goods or services incorrectly, or in a way that you did not intend.

2. We have seen many cases where an international application uses the title of a class or subclass to include all of the goods in that category; however, under the Chinese subclass system, the translation of the title often does not cover all of the goods. Thus, the applicant’s scope of protection may be much narrower than what they intended.

The moral of the story is that the next time you register a trademark in mainland China, you may want to spend a little extra energy at the filing stage to file a national Chinese application. Checking a box on the Madrid application, while quick and easy, is not always the best way to go.