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 advantage.
Necessary work prior to 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, it is better to seek local advice for this verification, which 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 11 (or 1) 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, at which point you will have to file an application for review with the Trademark Review and Adjudication Board (TRAB).
International or domestic, the application must conform to the Chinese "sub-class" system.
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 judged on the basis of the sub-classes. The same trademark covering goods that fall into different sub-classes can co-exist, e.g., balls for games, body-training apparatus, machines for physical exercises, and gloves for games are not considered “similar” because they respectively fall into sub-classes 2804, 2805, 2807 and 2809. As a result, it is advisable to discuss with a Chinese counsel on what goods and services to cover to make sure the trademark is well protected by covering all related sub-classes.
So, even when filing an international extension, it is necessary to carefully select the list of products and services. Otherwise, you might take for granted that your trademark can be protected on certain products, but it turns out later you were wrong because the products concerned are not similar.
However, 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 reasons. The CTMO seldom objects descriptions of goods and services for an international trademark unless the goods/services are not accepted in China, gambling for example. 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.
Possible amendment to a trademark application
As mentioned above, this possibility does not exist for international applications, but it does exist for domestic applications. However in practice, it is less and less used by the examiners. This is due to the huge quantity and time pressure imposed on them. The amount of trademark applications in China has been increasing each year. In 2015, the CTMO received over 2.8 million applications, boasting the total amount of registered trademarks to over 10 million. As a result, trademark prosecution in China is highly mechanical. After filing a trademark, the applicant should in principle, be able to receive a notification from the examiner in case there is a problem that can be solved by amending the application. But in practice, the applicant can only wait to see if the mark will be approved or refused, without communication with the Examiner, and mostly likely having no chance to amend the application. As a result, the work done before the filing is essential.
Which one is faster?
For domestic applications, CTMO must conclude the examination within 9 months, whereas the international trademark application takes 12 or up to 18 months according to the Madrid Agreement and Madrid Protocol. The latter’s timing disadvantage may have dire 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. If an international trademark is filed only one or two months before a domestic application, the examiner may not be aware of the international trademark’s existence when he examines 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. In the end, the owner of the international trademark will have 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 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 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.
Where there is any modification, assignment, or 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 over one year for the CTMO to update the renewal and/or assignment record of an international trademark into 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 towards the Madrid system trademark
In a potentially conflictual background, it happens that you may want to file a trademark even though you know that it might be opposed by others. In such case, it is advisable to go through the Madrid system because it is more difficult to monitor oppositions to the International Trademark Gazette. Therefore, the risk of opposition is lower.