If you’re even thinking about doing business in China, the first thing to do is protect your brand by applying to register a trade mark in China. China’s first-to-file trade marks system means that registering as early as possible is the most reliable way to protect your intellectual property (IP) and prevent other people from registering your trade mark, a common problem in China.
There are two ways to register a trade mark in China:
1. File a direct application with the Chinese Trademarks Office (CTMO);
2. Extend protection of your Australian trade mark into China using the Madrid Protocol.
Registering your trade mark in China can be complex, and success rates for self-filed applications filed through either route are low. We strongly recommend seeking the advice of a trade marks attorney with expertise and experience filing in China. Your trade marks attorney can guide you on the most appropriate filing method as part of your overall trade mark and business strategy.
This blog posts looks at three things to be aware of when applying to register your trade mark in China using the Madrid Protocol.
1 - List of Goods and Services
Most countries, including Australia, divide trade marks goods and services into the 45 classes of the NICE Classification system. China uses the NICE classification but divides the classes further into subclasses. For example, China divides NICE class 25 (Clothing, footwear, headgear) into 13 different subclasses including 2507 (Shoes), 2508 (Hats), 2509 (Socks), 2510 (Gloves), and 2512 (Belts).
If your international application uses the official NICE heading for Class 25 of “clothing, footwear, headgear”, the CTMO examiner will usually assign you only some of the subclasses within Class 25 related to these goods. You could miss out on coverage for goods in the other subclasses.
Items in different subclasses are generally not considered similar to one another. Not having coverage in all of the subclasses may mean someone could register an identical trade mark in the subclasses not covered.
An international application has a main list of goods and services, but the list of goods and services for each country does not have to be the same. It’s possible to limit the list of goods and services in an international application designating China in such a way that the list of specific items covers more Chinese subclasses. The limited list of goods and services must be encompassed by the main list of goods and services.
Also note that China generally does not allow trade marks in relation to retail services in Class 35. A trade marks attorney can advise on options to protect retail services in China.
In summary, crafting a list of specific goods and services that will provide comprehensive coverage in desired subclasses is complex, and should be handled by an experienced trade marks attorney.
2 – Certificate of Registration
In order to take enforcement action in China, you are usually required to show your trade mark certificate of registration. A certificate of registration is not automatically issued for an international registration using the Madrid Protocol, but can be requested for a fee from the CMTO. A trade marks attorney may be able to assist you with this, noting the process can sometimes take several months.
3 – 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. Depending on your brand strategy, you may wish to register a Chinese language trade mark in China in addition to your English mark. Branding professionals can help you develop a strong Chinese language brand that appeals to Chinese consumers.
To extend protection of your trade mark through the Madrid Protocol you need to base the international application on a directly filed Australian application or registration. If you do not intend to use the trade mark in Australia, then the Madrid Protocol might not be the best option to register your Chinese language trade mark.
Note however that it’s also possible to use both the Madrid Protocol and direct filing with the CTMO in combination as part of your overall trade marks strategy. For example, if you are planning to file both English and Chinese language trade marks in China, you could file a Madrid application based on the English language mark and file a direct application to the CTMO for the Chinese language mark. We encourage you to seek the advice of an experienced trade marks attorney for any such consideration.
Registering your trade mark in China is complex. We strongly recommend engaging the services of a trade marks attorney with experience filing in China, who can advise you on the most appropriate method of filing, and assist in preparing your application. This could save you time and money in the long run.
Read more about protecting trade marks and other IP in our Guide to Protecting your IP in China.
You can also do a preliminary search of the Chinese trade marks register to see what’s already been registered – refer to our Guide to searching the Chinese trade marks register.