There are two ways to register a trade mark in China:
- File a direct application with the Chinese Trade Marks Office (CTMO);
- 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
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.
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.