ECA

Registering trade marks in China: Madrid filing challenges

14.06.2018 IP Australia

If you’re even thinking about doing business in China, the first thing you should do is protect your brand by applying for a trade mark in China. China’s first-to-file trade marks system means that registering as early as possible is the only reliable way to ensure the most efficient protection of your intellectual property in China and avoid bad faith trade mark registrations, a common problem in China.

There are two ways to register a trade mark in China:

  1. File a direct application with the Chinese Trade Marks Office (CTMO);
  2. Extend protection of your Australian trade mark registration into China using the Madrid Protocol.
Self-filing in China through the Madrid Protocol may look simple, but in practice almost always encounters serious problems, many of which cannot be overcome. This blog post explains four common problems Madrid applications encounter, and concludes with suggestions on how register your trade marks in China.

Problem 1 – narrow scope of protection

Most countries, including Australia, divide trade marks goods and services into the 45 classes of the NICE Classification system. China uses the NICE classifications but divides them further into subclasses. For example, China divides NICE class 25 (Clothing, footwear, headgear) into 13 different subclasses such as 2507 (Shoes) and 2508 (Hats).

When you file a direct application with the CTMO, you can choose the subclasses for your trade mark. But when you file a Madrid application, a CTMO examiner will decide based on your Madrid application description what subclasses your application covers. This often means you’ll miss out on subclasses that you’d like to protect.

For example, if you file a Madrid application using the official NICE heading for Class 25 of “clothing, footwear, headgear”, the CTMO examiner will usually assign you only 4 subclasses within Class 25 related to these goods. You’ll miss out on coverage for goods in the other 9 subclasses, including gloves, socks, swim wear, neck ties, belts, wedding dresses and other items.

Items in different subclasses are generally not considered similar to one another. This means you can’t stop people using your brand in subclasses you don’t have coverage in. Other people can even register their own identical trade marks in these subclasses, and exclude you from using your brand on these goods.

The situation is similar in all classes, including those Australians file in the most - Class 9 (apparatus and instruments), Class 35 (advertising), Class 41 (education), and Class 42 (scientific and tech services). Also note that China generally does not allow trade marks in relation to retail services in Class 35.

Problem 2 – no certificate of registration

In order to take enforcement action in China, you are usually required to show your trade mark certificate of registration. When you register a trade mark through a direct application, you will be automatically issued with a certificate of registration. However, when registering through Madrid you’ll have to go through an additional step of applying for the certificate, which costs money and usually takes over three months to issue. This can feel like an eternity if you’re facing infringement.

Problem 3 – takes longer to obtain registration

A direct application will usually be examined within 9-12 months, and the CTMO is aiming to cut that time to 6 months by the end of 2018. In contrast, the CTMO has up to 18 months to examine a Madrid application.

Problem 4 – Chinese language trade marks

Chinese language trade marks can be even more important than English trade marks in China, especially on consumer goods – see our case study. Brand strategy consultants can help you develop a Chinese language brand that will appeal to Chinese consumers.

To extend protection of a Chinese language trade mark into China through the Madrid Protocol, you would have to first apply for the Chinese language trade mark in Australia. It’s simpler to apply for a Chinese language mark directly with the CTMO.

Conclusion

It looks easy to use the Madrid system to register in China – just tick the box. But in practice, this almost always has significant difficulties due to the nature of the Chinese IP system. Don’t waste time or money trying to self-file for trade mark protection in China. Be willing to spend a little money to get it right from the beginning - consult a registered Australian trade marks attorney who has experience filing in China, or go directly to a Chinese trade marks agent.

Read more about protecting trade marks and other IP in our Guide to Protecting your IP in China.

You can also do a preliminary search of the Chinese trade marks register to see what’s already been registered – refer to our Guide to searching the Chinese trade marks register.
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