This month we look at benefits and drawbacks of using the
Madrid system to extend international trade mark registrations
(IRs) to, as compared with filing national applications in,
China. This article is not exhaustive and only covers some of
the more important issues raised by this topic.
Goods/services descriptions (IDs)
With limited exceptions, for national applications China
essentially strictly follows the Nice Classification IDs, and
an applicant will receive an Amendment Notice for any IDs that
are deemed "nonstandard". IDs practice in other jurisdictions
often requires that IDs be fairly restrictive – you
may not be able to cover "computer programs, recorded" (a Nice
ID seen as too broad), but could cover "computer programs,
recorded, for use in radiological testing equipment", which ID
China's Trade Mark Office (TMO) would likely refuse as
When it is crucial to a brand owner to obtain the exact
coverage that is in the application or registration on which
the IR is based, and such IDs would not normally be accepted by
the TMO because they do not match the Nice Classification IDs
verbatim, using Madrid can be helpful (this is also true where
getting a priority filing date would put the IR extension ahead
of a pirate national application in China).
In principle, so long as WIPO accepts the IDs, those will be
accepted in China and merely translated into Chinese and placed
in relevant similarity subgroups. The main exception is for IDs
that run against current TMO policy, such as for "retail
services" (even though WIPO would accept it, that exact ID is
not yet accepted in China).
Similarity subgroup coverage
The other side of being able to get the exact IDs through
without amendment is that the coverage provided by IR
extensions based on applications filed outside of China is
comparatively narrower than what could be obtained via a
national application in China. Extending an IR to China usually
leaves huge subgroup coverage gaps in each class, thereby
enabling industrious trade mark pirates to get a foothold and
try to ransom the brand.
For example, in Class 25, an IR may cover different types of
clothing items (for example, jackets, shirts, pants,
underwear), all of which would fall into similarity subgroup
2501 in China, but would not cover related subgroups 2502,
2503, 2504, or 2505. A trade mark pirate who filed
subsequently, but only covering items that fall into subgroups
2502-2505, could get its application through without the brand
owner's IR being cited. Contrast this with filing a national
application that includes the exact ID "clothing", which is
deemed in China to cover subgroups 2501-2505 and would serve to
block the later pirate's application for the same/similar mark
on those goods.
This is the benefit of filing a national application
– the ability to select one item from each similarity
subgroup (and subparagraph therein, where applicable) and
thereby completely block subsequent pirate applications in the
class. The benefit of doing so usually outweighs the extra
expense, and serves to prevent unnecessary oppositions (the
outcome of which is frequently also uncertain in China).
When it is critical to get the exact IDs through to China
and budget permits, best practice would be to pursue a belts
and braces approach – file the IR extension together
with a "gap-filler" national application in China, to ensure
that no similarity subgroups or subparagraphs are left
uncovered and available for pirates.
IRs are frequently filed to cover more than one class of
goods or services. China also accepts multi-class national
applications. The difference is that when something occurs in
China to affect one of the classes in the national application,
it can hold up the entire application, even for classes that
were not affected by the issue.
For example, an opposition against one class would tie up
the entire multi-class national application until resolution of
the opposition. This is not true for IR extensions to China.
With an IR extension, the other classes would be permitted to
proceed independently. This also applies to assignments. In
China, there is no mechanism for separating out a given class
or classes from a multiclass national filing – the
entire filing must be assigned.
Because of this, and the TMO not discounting official filing
fees for multiclass applications, current best practice when
filing directly in China is simply to file single-class
A national application in China is required to be examined
within nine months after application filing date. Contrast this
with 12 months (where the Madrid Agreement applies to the IR
extension) and 18 months (where the Madrid Protocol applies to
the IR extension). If the IR is coming from a Protocol-only
jurisdiction, examination time is effectively twice as long as
a national application. This also figures into renewal and
Customs IPR recordation issues, to which we turn last.
Renewals and Customs recordations
Renewals of IR extensions are comparatively cheaper than
national registrations, but there is a cost when it comes to
Customs IPR protection. It takes much longer to obtain a
TMO-issued certificate confirming that an IR extension has been
renewed with respect to China, which usually leaves a gap of
many months in Customs IPR recordation protection, as China
Customs will require the TMO-issued confirmation before it will
renew the IPR recordation for an IR extension.
Because renewals of national registrations can be filed up
to 12 months before expiration, the renewals are usually
received and ready to be submitted to China Customs with little
or no gap in IPR recordation protection.
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