—on the Madrid trademark registration in China
Highlight: the essay focuses on the advantage of the Madrid International Registration of Trademark and its application in China.
Recently, the symposiums on the effective trademark registration in Madrid System have been held by WIPO in several cities in China (related news 1 & 2). The System could provide the applicant, including the foreign investors in China, a cost effective and efficient way for trademark registration. Bridge IP Commentary today will show you the way to file the application under the system in China.
There are two main application methods for international trademark registration, namely the separate registration in each country and the registration under Madrid System. On comparison, the System may cost less time and expenses on the application.
The System include Madrid Agreement of for International Registration of Trade Marks (the Agreement) and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Protocol), and the Protocol, which covers the main economic entities like China, U.S.A, Japan and European Industrial Countries, has introduced some changes to the prior Agreement.
I. What’s the application base of Madrid registration?
On brief, once there has filed the application on the trademark to the China Trademark Office and the mark is granted the acceptance notice, or is published after preliminary examination, even the mark is approved no certificates, it’s entitled to apply for international registration through the System with the jurisdiction for protection designated.
II. Are there any restrictions on the application under the System?
By the Agreement and the Protocol, once the applicant in China could meet one of the following conditions, he/she could file a international registration application under the System: (1) the individual with China nationality; (2) the individual, legal entity or other organization setting up real and effective business place(s) in China, including those individual, legal entity and organizations investing in China regardless wheter they come from the Contracting Party; (3) the individual, legal entity or other organization with domicile in China. Furthermore, the legal entities or individuals from Taiwan could also file the Madrid application to China trademark office.
Besides the restriction on the subject qualification, the Madrid System also limits the content and scope of the trademark applied, and it regulates that the applied trademark shall be identical to the one applied, published after preliminary examination or approved in China. Moreover, the applied the good or service classes shall be the same as those in the basic application.
III. To whom may the application be filed and how much and how long may it cost?
As provides in both the Agreement and the Protocol, the international registration applicant in China could file the application to the International Registry of Trademark Office through agency, and the day the Registry receiving the material shall the application date for international registration.
The Registry will demand the payment of fees after the examination on the materials submitted, and once the fees are paid the material will be presented to the International Bureau of WIPO, who will transfer the material to the designated member jurisdiction and issue an International Registration to the applicant when no defects on the material, and the International Registration is much more like a acceptance notice rather than a certificate. Generally, the applied trademark will be protected in the designated country when there is no opposition from the contraction party of the Agreement or the Protocol, and normally the applicant will not be granted the certificate from the designated countries excluding U.S.A., Japan and South Korea.
The charge for the Madrid registration includes the basic fee and the fee for designated country, which are both in Swiss Franc. The basic fee is 653 Swiss Franc for black-white marks and 903 for color marks. As to the standard of the fee charged in each jurisdiction, you may visit the website of China Trademark Office. To our experience, it’s suggested to file the separate application when the only few countries to be registered, and to choose the Madrid registration when a bundle of countries to be registered for it may save the costs hereby produced. A client of us once only paid 20% of the fee for separate registration in Madrid registration.
IV. What’re the risks?
(1) No retrieval could be made.
The trademark retrieval is the effective way to determine any possible infringement against the first registered trademark, or any similar or identical trademarks, and it can also improve the passing rate of the registration. However, the retrieval could not be made with a single office under the System, and that lays the uncertainty in the application.
(2) the central attack
The central attack refers to the situation where the mark is refused, withdrawn, canceled, abandoned or announced invalid with 5 years after registration, then such change shall cover all the designated country and the mark influenced shall no longer be protected under the System.
Therefore, for the avoidance of the above situation, Bridge IP Law Commentary suggests the applicant ensure the mark to be distinctive and identifiable, and violates no first applied trademarks, well-known trademarks or other prior rights.
The Protocol also gives a chance for making up after the central attack. It regulates that the applicant may transfer the registration to the national or regional application within 3 months after the mark is cancelled, namely the direct application in the designated country. Surely, it may cost extra cost and time.
In a word, the Madrid System has been the primary registration method of trademark for it being efficient and economic. Though it faces the risks of no retrieval and central attack, it could be the fast path for international registration once the applicant could ensure the mark conform the laws related and make the due diligence investigation.
Author: Albert Chen
Attorney-at-law of DeBund Law Offices
Co-author: Mr. You Yunting
Founder & Editor-in-Chief of Bridge IP Law Commentary
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
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Bridge IP Law Commentary is a website focus on the introduction of commercial laws in China, especially the intellectual property laws. All the posts here are our original works. And all news or cases referred here are from public reports, and our comments or analysis are of due diligence, neutrality and impartiality, representing our own opinions only and are our original works. You may contact us shall you have any opinions or suggestions.
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