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China’s 15-day challenge

Trademark owners expressed concern over China’s strict 15-day deadline for responding to a refusal of a trademark application at the Madrid System User’s Meeting yesterday

“We get these scary notices from the Trademark Office,” said Carl Oppedahl of Oppedahl Patent Law Firm. “Usually by the time we get them there are only three days left to respond.”

Angela Leong, director of OPAL IP in Singapore, added that this deadline was particularly tight because the trademark owner would need to provide a power of attorney if they wanted to appeal the refused trademark application to China’s Trademark Review and Appeal Board.

Wen Xue, Deputy Director, International Registration Division at the China Trademark Office, admitted that the deadline was “very short” but clarified that, for overseas applicants, the deadline is calculated from the date of receipt, not the date when the notice was sent.

Wen added that China’s Trademark Law is in the process of being amended. In the latest draft, the deadlines for appealing a refused application will be extended to 30 days. Tao Junying from WIPO, who moderated yesterday’s session, described the proposed extension as “very good news.”

In his earlier presentation, Wen outlined some other important aspects of China’s trademark system that brand owners should take into account. These include that China does not accept sound and smell trademarks or marks that are, as the Trademark Act states, “detrimental to socialist morals or customs”. “If you want a mark registered in China, be cautious when making reference to political terms, names of political leaders or religions,” said Wen.

Wen also advised brand owners to make sure that all their trademarks in China are registered under the same name and address. If not, an application may be refused because of a conflicting registration, even if that registration belongs to the same brand owner.

In addition to Wen, Michael Arblaster from IP Australia and Miriam Taburiaux from OHIM explained how their offices deal with trademark applications made using the Madrid System.

The session began with a video message from WIPO Director General Francis Gurry in which he highlighted the 120th anniversary of the Madrid System and the 15th anniversary of the Protocol. He also looked forward to the accession of Algeria, the last remaining country that is a member of the Madrid Agreement but not the Protocol. “This will introduce a great deal of simplicity for all users and offices.”

Latest Madrid developments

• Tajikistan has become the latest member of the Madrid Protocol, with effect from next month. Its accession means only one country—Algeria—remains a member of the Agreement and not the Protocol.

• India’s Parliament has passed a bill to join the system and its trademark office is now working on cutting the backlog so that it can meet the Madrid System deadlines. It is expected to be ready to join by early next year. Other countries that are discussing accession are Colombia, Costa Rica and South Africa. All Asean member states are committed to joining by 2015: Indonesia, Malaysia, Thailand and the Philippines are in advanced discussions.

• Filings using the Madrid System grew by 13% from 2009 to 2010, reversing the decline caused by the economic downturn. If the trends from the first four months of this year continue, 2011 is likely to break the annual record for registrations set in 2008.

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