In China, a trademark application can be directly filed with
the China Trademark Office (CTMO) or be extended to China via
the Madrid system. Which one is better? Both have their pros
and cons but in the end, it seems that the national application
might have a little more advantages.
Necessary work to be done before
Whether you wish to extend your trademark to China or file
it directly with the CTMO, you need to perform a few
verifications. You need to verify that the trademark is
intrinsically registrable in China (there are, sometimes,
obstacles due to local culture that you might not know about)
and, of course, that it is available. So, even if you prefer
the simplicity of the Madrid system, do not hesitate to seek
local Chinese advice for this verification. It might save you
some expenses in the future.
Which one is simpler?
Extending a national registration or application to several
countries, and for several classes at the same time, definitely
seems the simplest way. You work "from home", with your
national trademark agent, and all he/she has to do is to notify
However, this simplicity may only be apparent.
You only know if the trademark is registered in China at the
expiration of the period of 12 or 18 months, if the CTMO has
not notified any objection to WIPO. During that examination
period you have no contact with the examiner of the CTMO. So,
if for any reason, the examiner finds a problem with the
trademark, you only find out after it has been refused and
then, you have to file an application for review with the
Trademark Review and Adjudication Board (TRAB).
Which one is more flexible?
The CTMO does not accept domestic applications that are too
general and too vague in regard to a certain type of products.
It is necessary to list exactly what products are designated.
Besides, the CTMO divides each international class into several
sub-classes, and the similarities of the goods and services are
basically judged on the basis of the sub-classes. The same
trademark covering goods that fall into different sub-classes
could co-exist, e.g., balls for games, body-training apparatus,
machines for physical exercises, gloves for games are not
similar as they respectively fall into sub-classes 2804, 2805,
2807 and 2809. As a result, it is advisable to have full
discussion with a Chinese counsel on what goods and services to
be covered to make sure the trademark could be well protected
by covering all the related sub-classes. Also, the Class
heading will be classified into the specific sub-classes, and
can't cover the goods and services in the whole class.
So, even when filing an international extension, it is
necessary to carefully select the list of products and
services, otherwise you might believe that your trademark is
protected for certain products because you believe they are
similar, and you will find out later that it is not.
Actually, in certain circumstances, the international
application may still have an advantage over the domestic
application. The examiners of international applications are
not the same as those of domestic applications. They are less
strict and less prone to refuse an application for certain
products, due to a lack of precision or other reason. The CTMO
seldom objects the descriptions of goods and services for an
international trademark unless the goods/services are not
accepted in China such as gambling. Thus, if some
goods/services are not accepted in a domestic application, the
applicant might still be able to have such goods/services
covered by the Madrid system trademark.
Which one is faster?
For domestic applications, CTMO must conclude the
examination within 9 months. Compared with the international
trademark application (12 or 18 months according to the Madrid
Agreement and Madrid Protocol) the advantage to domestic
application is obvious. This difference of time can have
disagreeable consequences: it is not unusual that the CTMO does
not input right away into its system the data received from
WIPO about international trademark extensions. So, if an
international trademark is filed only one or two months before
a domestic application, the examiner would not be aware of the
existence of this international trademark when he performs the
examination of the domestic application. Therefore, the
domestic application will be accepted and published, even
though there was a prior application, which eventually will
mature to registration. And in the end, the owner of the
international trademark has to file an opposition against the
domestic trademark application.
Which one is easier to enforce?
In theory, there is no difference in the validity and
enforceability of both domestic and international
In practice, there is a difference, because the enforcement
authorities of China (administrative or judicial) require the
submission of a national trademark certificate, to be issued by
the CTMO. The certificate issued by WIPO is not accepted, and
the right holder has to specifically request the issuance of
registration certification by the CTMO to prove its trademark
rights, which can take an additional two to four months.
Moreover, where there is any modification, assignment,
renewal of the international trademark, the owner has to
request a new registration certification to prove its right.
According to the current practice, it may take months for the
CTMO to update the renewal and/or assignment record of an
international trademark in its system, and during this period,
the right holder can not enforce its rights because no
registration certification can be produced to prove the
existence of the right.
Discretion of the Madrid system
In a potentially conflictual background, it happens that you
want to file a trademark even though know that it might be
opposed by others. In that case, it may be advisable to go
through the Madrid system. Indeed, it is more difficult to
monitor the International Trademark Gazette for opposition
purposes. Therefore, the risk of opposition is lower.