Whenever clients ask about filing a trademark in China via the Madrid System, my answer is simple: filing a national application directly with China’s own Trademark Office is better.
The one-size-fits-all Madrid process makes registering a trademark in China seem easy. Really easy: all you have to do is check a box marked “China.” However, while Madrid applications are supposed to be cheap and quick, fixing Madrid problems after the fact is neither. This problem is exacerbated by U.S. lawyers who are comfortable with filing in Madrid but have no experience filing in China.
Trademark prosecution in China is highly mechanical; for the vast majority of applications, you file an application, wait 18 months, and at the end of that time your trademark is either registered or rejected. (A slight oversimplification, but not by much.) There is no equivalent to a USPTO office action, no back-and-forth with trademark examiners, and no chance to amend an application that has been filed.
For this reason, the meaningful work for Chinese trademark applications occurs before the application is filed.
First of all, it is essential to conduct a pre-application trademark screening to assess the trademark’s likelihood of being registered in its current form. Is the inherently distinctive? Does it run afoul of China’s statutory prohibitions on trademarks (such as including the names of countries)? Does it conflict with any other trademarks on grounds of similarity?
Next, you must determine in which class(es) to file in and the specific products or services (“items”) to be covered by the mark. This is a lot trickier than it sounds because China divides each Nice class into a unique system of subclasses. For purposes of trademark registration, each subclass is treated discretely: a trademark for one item in a given subclass covers all items in that subclass, but is not effective on items in any other subclass.
When you file a China national application, you determine the subclasses that you want your application to cover. But when you file a Madrid application, your list of items goes straight to a trademark examiner in China, who will decide from your list which subclasses the items should go in without consulting you. This lack of consultation, combined with the examiners’ often-tenuous grasp of English (or French or Spanish), means that imprecise descriptions of items can lead to problems of both over- and under-inclusiveness.
It is possible to perform a pre-application screening before filing a Madrid application, and it is possible to craft a description of items in a Madrid application that will conform to the Chinese subclass system. But this requires working with an experienced China trademark attorney or agent, and it will cost nearly as much and take nearly as much time as a national application. In other words, you lose all of the advantages of the Madrid System, but keep all of the disadvantages.
Finally, even if your Madrid System trademark is registered in China without a hitch, you may still have trouble enforcing your rights. Upon registration, the only formal certificate for Madrid System trademarks is the one issued by WIPO. China does not issue its own separate trademark certificate. In theory, this should not be a problem, because the WIPO certificate should be sufficient to enforce your trademark rights under Chinese law. Much of the time, before they will lift a finger against an infringing factory or website, Chinese law enforcement will demand a copy of a Chinese trademark certificate. It is easy enough to request a Chinese trademark certificate based on a WIPO registration, but it takes a few months to get one. That can feel like an eternity when your trademark is being knocked off.
If a client has an extremely precise and limited list of items and is already filing a Madrid application for a number of countries, then I might consider adding China to that list. But for the majority of clients, I would opt for a Chinese application. China’s Trademark Office is fickle enough with national applications: Why make things more difficult by filing a Madrid System application?
