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Analysis on Pros and Cons of Madrid Trademark Registration From the Perspective of Obtaining Protection for Foreign Trademarks in China
Erica LI Trademark Attorney Trademark Department
Welcome to Linda Liu & Partners on air！
Today, I would like to share with you some pros and cons of the Madrid trademark registration in China
It is known there are two approaches for protection of foreign companies’ trademarks in China, namely, (1) filing a Madrid trademark before WIPO and designating China for territorial extension, and (2) filing a Chinese national trademark application with CNIPA, i.e., China National Intellectual Property Administration.
Many foreign companies often hesitate to choose the best filing approach. Based on our experience, we would like to summarize some pros and cons of Madrid trademark registration VS. Chinese national trademark application as follows:
Let’s start with the pros:
Firstly, the cost of filing a Madrid registration may be lower than that of filing a Chinese national trademark if many contracting countries are designated.
Fees for filing a Madrid trademark are charged by class instead of by the number of designated contracting parties. When multiple contracting parties are designated, a Madrid trademark will be more favorable in saving filing cost.
For filing a Chinese national trademark application, an additional official fee of 30 yuan, around 5 US dollars, for each extra goods in each class would be charged if more than 10 goods are designated in the class. The filing cost will be high if a large number of goods are designated. However, there is no limit on the number of goods in a Madrid trademark, which means no additional official fee will be charged regardless how many goods are designated.
In addition, since there is no need to entrust a Chinese trademark agency for the filing procedure, Chinese attorney fees can be saved to some extent.
Therefore, the Madrid trademark registration is more cost-effective if the trademark is registered smoothly.
Secondly, post-registration procedures are easily to be managed.
In handling post-registration procedures such as transfer, change, deletion, etc., fees for a Madrid trademark registration are charged based on the number of registrations other than based on the number of designated classes and contracting parties.
If a Madrid trademark is protected in many designated contracting countries, it would be easier for companies to conduct a unified management, since they only need to file one application for subsequent changes, transfers, etc., which is simple and could cover all the designated contracting parties.
Thirdly, broad goods specifications can be applied.
So far, the CNIPA’s examination on the designated goods filed through the Madrid trademark registration system is relatively loose. Even if the goods specification is not listed in the official classification or the official pre-approved list, as long as it doesn’t exceed the scope of the corresponding class, it is likely to be accepted.
By contrast, stricter examination standards are applied by the CNIPA for the national trademark filing. If the goods specification is too broad or too narrow, it may likely be required to be modified into acceptable items in the pre-approved goods list.
Besides the above pros, applicants may also need to consider the cons of Madrid trademarks:
Firstly, a Madrid trademark registration cannot be cared by experienced local Chinese attorneys at the time of filing.
A Madrid trademark registration could only be filed by the registrant or its national representative who may be not familiar with the Chinese law practice nor well-guided by experienced Chinese local attorneys. A communication is not established with the CNIPA during the examination of the trademark application. Only after the mark is rejected, the applicant may then entrust a Chinese agency to handle the review procedure on refusal. Due to the large number of existing trademarks, the refusal rate of trademark applications is high. When the mark is rejected, the applicant may already miss the best time to prosecute the mark and take actions against conflicting prior trademarks. The effect of review on trademark refusal is usually not ideal and the cost for prosecution is high. If the registrant wishes to further appeal before the Court, the cost will be much higher.
Secondly, Madrid registration is vulnerable to a “central attack”.
If the basic registration of an international registration is cancelled or invalidated, or its basic application is refused within 5 years from the international registration date, the Madrid registration will be no longer protected by the designated contracting parties. This is often referred to as a “central attack”.
In the response to a “central attack”, the Madrid Protocol allows registrants to convert the Madrid registration into national trademarks with the original registration date and priority date. This is undoubtedly good news. But the time and fees can be much more than filing national trademark applications from the very start.
Thirdly, it takes a longer time to obtain a certified copy of a registration certificate and may cause inconveniences when enforcement is needed.
The certificate of ownership for a registered Madrid trademark in China is a certified copy of registration certificate issued by the CNIPA. However, the CNIPA will not proactively issue a registration certificate for a Madrid trademark. The registrant should entrust a Chinese trademark agency to submit an application before the CNIPA. The application could only be submitted after expiry of the refusal period, i.e., 12 months or 18 months depending on the contracting party. Usually, when the registrant receives a Statement of Grant of Protection, it means that the mark is not to be rejected in China. However, the registrant still needs to wait for the expiry of the refusal period to obtain a certified copy of the registration certificate.
By contrast, for a Chinese national trademark registration, the registrant will receive the trademark registration certificate issued by the CNIPA in 1-2 months after registration. For a smooth national trademark application, it only takes about 10 months from filing until registration certificate is issued.
Fourthly, for some goods specifications, the expected scope of protection may not match the actual scope.
As aforementioned, the CNIPA’s examination on designated goods through Madrid trademark registration system is relatively lenient. A goods specification with wide scope can also be accepted. However, it may sometimes cause some troubles.
A Madrid registration needs to be processed based on the basic application or basic registration in the original country of the registrant. When designating to China, if the goods specification in the context of Chinese is vague, the examiner can only determine which subclass it belongs to only based on personal understanding and experience. For some goods specifications, the applicant’s expected scope of rights in the country of origin does not necessarily match the actual scope of rights in China.
Fifthly, deviations may occur on goods translation and affect the enforcement of rights.
The filing documents submitted to WIPO for Madrid trademark registration should be in English or French. When the territorial extension is designated to China, it is first translated into Chinese by an authorized translation agency and then entered into the CNIPA trademark database. Since translators are not professional trademark practitioners, they may be unfamiliar with China’s trademark classification and trademark practice. They translate based on their translation skills. Besides, with the increasing number of trademark applications year by year, the amount of translation work has surged. Occasional translation errors are also inevitable.
In practice, after a Madrid trademark obtains protection in China, few registrants will voluntarily check whether there is a deviation in the translation of goods. Contacting the authority in a timely manner is an effective method to solve the problem. But before the deviations are found and corrected, the trademarks on related goods may have been squatted by others, and the registrant will have to take actions against these squatted trademarks.
As analyzed above, the Madrid trademark registration system may have some pros and cons. Applicants can choose the approach that best suits their needs.
If you would like more discussions about this topic, you can find me via our email address: trademark@lindapatent.com.
As a leading IP law firm in China, we are always glad to help.
