File for Your China Trademark in China, not Madrid
Whenever clients ask about China trademark registration through the Madrid System, my advice is pretty straightforward: filing directly with the Chinese Trademark Office (CTMO) is almost always the smarter choice.
China’s Trademark System
China’s trademark system is a bit of a maze—complex, idiosyncratic, and highly regimented. And to make things trickier, it’s overseen by examiners whose decisions can sometimes feel unpredictable. The one-size-fits-all approach of the Madrid application ignores these nuances, making the process of registering a trademark in China seem deceptively straightforward. After all, you simply check a box marked “China.”
Unfortunately, this simplicity is misleading. Madrid applicants are often lulled into a false sense of security, only to face rejections that could have been avoided by filing a national application in China. While Madrid applications are marketed as quick and inexpensive, resolving issues that arise from them is neither. This problem is particularly pronounced among U.S. and EU lawyers accustomed to filing through the Madrid System but lacking experience with the intricacies of China’s trademark regime.
Trademark prosecution in China is a highly mechanical process. For most applications, you submit your filing, wait 10 to 14 months, and ultimately receive a decision—your trademark is either registered or rejected. While this description is somewhat simplified, it’s not far from reality.
Unlike with the United States trademark filing system, the CTMO offers no equivalent to an office action, no opportunity for dialogue with trademark examiners, and no chance to amend an application once it has been filed. This rigidity makes thorough preparation essential and leaves little room for error.
The most important work for Chinese trademark applications happens before the application is even filed. Conducting a thorough pre-application trademark clearance—also known as a trademark screening—is essential to assess the mark’s registrability. This process involves answering critical questions: Is the mark inherently distinctive? Does it violate any of China’s statutory prohibitions on trademarks? Does it conflict with existing trademarks? Identifying these issues early can prevent costly and time-consuming rejections down the line.
Determining Classes and Subclasses for Your China Trademark
Once the pre-application screening is complete and shows promising results, the next step is to determine the appropriate class(es) for filing and precisely define the products or services (“items”) your mark will cover.
The Chinese Trademark Office (CTMO) applies a unique classification system by dividing each Nice Class into a series of CTMO subclasses. Understanding this structure is critical when pursuing China trademark registration.
Unlike broader systems, the CTMO treats each subclass independently. Registering a trademark for one item within a particular subclass covers all items within that subclass—but offers no protection outside of it. This segmentation is a fundamental aspect of China’s trademark system and often becomes a stumbling block for those relying on the Madrid System, where subclass distinctions are not always properly accounted for.
Properly navigating these CTMO subclasses is essential to securing effective trademark protection in China.
To see how this works, let’s look at Nice Class 41, for which the official heading is “Education; providing of training; entertainment; sporting and cultural activities.” The CTMO divides Class 41 into seven different subclasses:
Subclass 4101 – education
Subclass 4102 – organizing educational, cultural, and recreational activities
Subclass 4103 – library services
Subclass 4104 – publishing services
Subclass 4105 – sports and entertainment services
Subclass 4106 – animal training
Subclass 4107 – otherwise uncategorized services.
Because Class 41 has seven subclasses, that means that seven identical trademarks, each held by a different entity, could theoretically coexist in Class 41. To show how this can work, I did a search of the trademarks in Class 41 for “MGM” and found that four different entities have filed applications:
(1) Marilyn Licensing Corp. has registered “MGM” in subclass 4107;
(2) A Chinese company, Great Wall International Communication Co. Ltd, has registered “MGM” in subclasses 4102 and 4104;
(3) Metro-Goldwyn Mayer Lion Corp. has registered “MGM” in subclasses 4101 and 4105, and (needlessly) again in subclass 4105; and
(4) MGM Resorts International has attempted to register “MGM” in all seven subclasses, but will almost certainly be rejected in all but subclasses 4103 and 4106 because of the conflicting prior registrations.
The China Issues with Madrid Applications
When you file a China national trademark application, you have the advantage of determining the exact subclasses you wish to cover. In contrast, filing through the Madrid System leaves this decision to a CTMO trademark examiner, who assigns subclasses based on your description of goods or services—without consulting you. This lack of consultation, coupled with examiners’ often-limited proficiency in English, French, or Spanish, frequently leads to errors of overinclusiveness or underinclusiveness.
Overinclusiveness is a Common Pitfall
A perfect example of how things can go wrong is MGM Resorts International’s application. They tried to cover all services within a class, even though many subclasses were already claimed by others. Because MGM Resorts filed a national application, the rejection only applied to services already covered in subclasses 4101, 4102, 4104, 4105, and 4107.
Had this been a Madrid application, the lack of precise subclass designation could have prompted the CTMO examiner to classify the services as covering all subclasses. This would likely result in a complete rejection of the application, rather than a partial one—demonstrating the heightened risk associated with using the Madrid System.
Underinclusiveness is Also a Common Pitfall
Attempting to cover all items in a class can also result in underinclusiveness, particularly when descriptions are overly broad or mirror Nice Class headings. The official Nice heading for Class 25 is “clothing, hats, and shoes.” If a Madrid application is filed using this description, the applicant may assume all items within Class 25 are protected. However, under the CTMO’s subclass system, this description fails to cover items such as socks, scarves, gloves, or belts, as none of these are categorized as “clothing” in China.
This mistake is especially common among trademark lawyers unfamiliar with China’s subclass structure, and even established brands can fall victim to underinclusiveness. In 2002, Apple Computer registered the Class 9 trademark for “IPHONE”, specifying computer hardware and software. However, because cellphones were classified under a different subclass, Hanwang Technology successfully registered “I-PHONE” for cellphones in 2004. At that time, iPhone was not yet a famous trademark in China, forcing Apple to negotiate with Hanwang to gain ownership of the trademark.
Losing the Advantages of the Madrid System
While it is possible to conduct a pre-application screening and craft item descriptions that align with the Chinese subclass system, doing so requires working with an experienced China trademark attorney or agent. This effort often matches the cost and time investment of filing a national application, effectively stripping away the cost and convenience benefits promised by the Madrid System.
In other words, applicants using the Madrid System often keep all the disadvantages while forfeiting the advantages.
China Enforcement Issues with Madrid Registrations
Even if your Madrid System trademark proceeds through the CTMO without obstacles and is officially registered, enforcing your trademark rights in China can present significant challenges.
When you file through the Madrid System, the only official registration certificate you receive is the one issued by the World Intellectual Property Organization (WIPO). While this certificate theoretically provides adequate proof of your rights under Chinese law, there is a significant gap between theory and practice.
Under China’s commitments as a member of the World Trade Organization (WTO), the WIPO certificate should be sufficient to enforce trademark rights. However, many Chinese government agencies, e-commerce platforms, and legal bodies often fail to recognize WIPO certificates as valid proof of registration.
Bureaucratic Roadblocks and Practical Realities
The reality is, Chinese bureaucrats and e-commerce platforms often turn a blind eye to WIPO certificates. Agencies, local enforcement bodies, and customer service representatives at major platforms like Alibaba, JD.com, and Pinduoduo often insist on seeing a CTMO-issued Chinese trademark certificate before taking any enforcement action.
This reluctance to acknowledge WIPO certificates stems from various factors:
Bureaucratic Inertia: Local enforcement bodies often adhere strictly to domestic procedures and documentation standards, dismissing foreign certificates as unfamiliar or non-binding.
E-Commerce Compliance Policies: Platforms such as Alibaba and JD.com require a CTMO-issued certificate for takedown requests to prevent infringement, regardless of China’s WTO obligations.
Fear of Legal Liability: Local authorities and online platforms may fear repercussions for enforcing intellectual property rights based solely on WIPO certificates, particularly if a dispute arises.
Language and Cultural Barriers: Officials and platform representatives often have limited familiarity with the Madrid System, further compounding their reluctance to accept WIPO-issued certificates.
The Costly Delay of Obtaining a CTMO Certificate
Although it is possible to request a Chinese trademark certificate from the CTMO based on a WIPO registration, the process is neither quick nor straightforward. Typically, it takes an additional three to five months to obtain the certificate.
This delay can be devastating if you are trying to combat trademark infringement, especially in fast-moving industries like fashion, technology, or consumer goods, where knockoffs and unauthorized sales can flood the market within weeks.
During this waiting period, infringing factories and online sellers can continue profiting from your brand’s reputation with little to no consequence. Even if you eventually obtain the CTMO certificate, the damage to your brand’s goodwill, market share, and revenue may already be substantial.
Relying Solely on the Madrid System is Risky
Relying only on the Madrid System can be like rolling the dice when it comes to protecting your trademark rights in China The additional step of acquiring a CTMO-issued certificate is not only time-consuming but can also prove costly—both in terms of legal fees and lost revenue due to ongoing infringement.
To truly protect your brand in China, it is often more efficient and effective to file a national application directly with the CTMO from the outset. This approach ensures you receive a CTMO-issued certificate upon registration, which is far more likely to be recognized and respected by local authorities and e-commerce platforms.
Conclusion
When considering China trademark registration, if a client has an extremely precise and limited list of items and is already using the Madrid System for multiple countries, it may make sense to add China. However, for the majority of clients, pursuing a national trademark application with the Chinese Trademark Office (CTMO) is the better route. The CTMO subclass system is complex and unforgiving; choosing the wrong approach can result in unnecessary delays and rejections. Why make the process more difficult by relying on the Madrid System when a direct national application is often more effective?
