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How to file? Directly in China with the CTMO or through international extension to China?

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 filing

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 WIPO.

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 trademarks.

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 trademark

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.

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