Chinese sub-class system
A trademark application can be filed directly with the China Trademark Office (CTMO) or extended to China via the Madrid System for the International Registration of Marks. While both options have their pros and cons, applications filed with the CTMO seem to have a slight advantage overall.
An applicant must perform certain checks regardless of whether it wants to extend its trademark to China or file it directly with the CTMO. Before filing, applicants must verify that the trademark:
- is registrable in China (as there may be local obstacles which the applicant is unaware of); and
- is available.
Even if the applicant prefers the simplicity of the Madrid system, it is better to seek advice in China regarding the above points to avoid future costs.
Extending a national registration or application to several countries and for several classes appears to be the simplest method of trademark registration. Essentially, an applicant can "work from home" with its national trademark agent and simply notify the World Intellectual Property Organisation (WIPO) of its application.
However, this simplicity may be misleading. If the CTMO fails to notify the WIPO of any objection, an applicant will learn that its trademark has been registered in China only once the 12 or 18-month examination period has expired. During the examination period, an applicant will have no contact with the CTMO examiner. Thus, if the examiner refuses the trademark for any reason, the applicant will not learn of this until afterwards – at which point it must file a review application with the Trademark Review and Adjudication Board.
The CTMO will reject a domestic application that is too general or vague regarding which products it covers. Thus, applicants must list the designated products specifically. Further, the CTMO divides each international class into several sub-classes, and the similarities of goods and services are judged on the basis of these sub-classes. Different trademarks covering goods that fall into different sub-classes can co-exist – for example, balls used for games, body-training apparatus, machines used for physical exercise and gloves used for games are not considered to be similar, as they fall under Sub-classes 2804, 2805, 2807 and 2809, respectively.
Even when filing an international extension, an applicant must carefully note the list of designated products and services. Otherwise, it might take for granted the fact that its trademark can extend to certain products, which may turn out to be incorrect if the products concerned are dissimilar.
However, in certain circumstances, an international application may still have an advantage over a domestic one. International application examiners are more lenient than those of domestic applications and are less prone to refuse an application for certain products due to a lack of specificity or otherwise. The CTMO seldom objects to descriptions of goods and services for international trademarks unless they are not permitted in China (eg, gambling services). Thus, if some goods or services are not permitted in a domestic application, the applicant may still be able to protect them under the Madrid system.
As mentioned above, international applications cannot be amended, whereas domestic applications can. However, in practice, this is decreasingly possible due to the large quantity of applications that examiners receive and the time pressure imposed on them. The number of trademark applications in China increases annually. In 2015 the CTMO received more than 2.8 million applications, boosting the total number of registered trademarks to more than 10 million. As a result, trademark prosecution in China is highly routine. After filing a trademark, the applicant should, in principle, receive a notification from the examiner if there is a problem that could be solved by amending the application. However, in practice, applicants can only wait and see if the mark will be approved or refused. Until then, applicants have no communication with the examiner and therefore no chance to amend the application. In light of this, completing the pre-filing steps correctly is essential.
The CTMO must conclude the examination of a domestic application within nine months, whereas international trademark applications take between 12 and 18 months under the Madrid Agreement and the Madrid Protocol. The latter's timing disadvantage may have dire consequences: the CTMO often does not input the data that it receives from the WIPO regarding international trademark extensions into its system immediately. 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 or she examines the domestic application. Therefore, the domestic application could be accepted and published even though there is a prior application which will eventually lead to registration. Ultimately, the international trademark rights holder would have to file an opposition against the domestic trademark application.
In theory, there is no difference in the validity and enforceability of domestic and international trademarks. However, in practice, the Chinese enforcement authorities (administrative and judicial) require the submission of a CTMO national trademark certificate; a WIPO certificate will not be accepted. Instead, a rights holder must specifically request the issuance of a CTMO registration certificate to prove its trademark rights, which can take an additional two to four months.
Where there is any modification, assignment, or renewal of an international trademark, the rights holder must request a new registration certification to prove its rights. According to existing practice, it can take more than one year for the CTMO to update an international trademark's renewal or assignment record. During this period, the rights holder cannot enforce its rights, as no registration certification can be produced.
Often an applicant may want to file a trademark even though it knows that it might be opposed. In such cases, it is advisable to use the Madrid system, as it is harder to monitor trademarks published in the International Trademark Gazette and, therefore, the risk of opposition is lower.
For further information on this topic please contact Mingming Yang at Wan Hui Da Law Firm & Intellectual Property Agency by telephone (+86 10 6892 1000) or email ([email protected]). The Wan Hui Da Law Firm & Intellectual Property Agency website can be accessed at www.wanhuida.com.