Ms. Haiyu Li, Lawyer and Partner of Chofn IP
A trademark can be registered in China through either a direct national registration (NR) or an international registration (IR), namely the Madrid system.
I would like to summarize the advantages and disadvantages of IR as follows for your easy information:
- Liberal specification: The China National Intellectual Property Administration (CNIPA) provides a list of acceptable goods or services, which is more friendly to IR.
- Possible lower cost: The basic official fee for NR via e-filing is CNY270 (≈USD40) per mark per class. If the number of designated goods or services exceeds the basic ten items, each additional item costs an extra CNY27 (≈USD4). The extra cost does not happen to IR, no matter how many items of goods or services are designated.
- Possible convenient management: If no official action arises, an IR designating multiple countries, with China included, can be managed consistently and save the holders’ resources and time.
- Certificate of registration not auto available: A Chinese registration certificate is routinely issued for a NR, but not for an IR. However, the certificate is often necessary for trademark enforcement or even for doing business locally, particularly for opening stores online or offline. Extra resources have to be spent on applying for the certificate.
- Possibly inaccurate translation and/or protection scope: China has a unique subclassification system to define the protection scope. IR needs to be translated and classified by the CNIPA. If inaccurate classification and/or translation arise, enforcement might be problematic. Therefore, it is advisable to re-check the classification and translation and request for correction if necessary.
- Possibly later enforceability: IRs are not enforceable, at least before the 12-month or 18-month examination period under the Madrid Agreement/Protocol expires if refusal or opposition does not arise, whereas smooth NRs may mature into registration in about 7 months and are enforceable immediately.
With regard to non-traditional marks such as 3D marks, collective or certification marks, the CNIPA has special requirements and examination criteria and often issues official actions. In case of NRs, local counsels might more efficiently communicate with the CNIPA.
In short, IRs are advantageous in terms of fees and management, but disadvantageous in terms of enforcement. The right holders and counsels should weigh the pros and cons before selecting IR or NR.