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๐—œ๐—ป๐˜๐—ฒ๐—ฟ๐—ป๐—ฎ๐˜๐—ถ๐—ผ๐—ป๐—ฎ๐—น ๐—ฅ๐—ฒ๐—ด๐—ถ๐˜€๐˜๐—ฟ๐—ฎ๐˜๐—ถ๐—ผ๐—ป๐˜€ (โ€œ๐—œ๐—ฅโ€) ๐—ฆ๐—ฒ๐—ฟ๐—ถ๐—ฒ๐˜€ ๐—ฃ๐—ฎ๐—ฟ๐˜ ๐Ÿฏ/๐Ÿฒ – ๐—ฆ๐—ต๐—ผ๐˜‚๐—น๐—ฑ ๐—ณ๐—ผ๐—ฟ๐—ฒ๐—ถ๐—ด๐—ป ๐—ฏ๐—ฟ๐—ฎ๐—ป๐—ฑ ๐—ผ๐˜„๐—ป๐—ฒ๐—ฟ๐˜€ ๐—ฑ๐—ฒ๐˜€๐—ถ๐—ด๐—ป๐—ฎ๐˜๐—ฒ ๐—ฎ๐—ป ๐—œ๐—ฅ ๐—ถ๐—ป๐˜๐—ผ ๐—–๐—ต๐—ถ๐—ป๐—ฎ ๐—ผ๐—ฟ ๐—ฎ๐—ฝ๐—ฝ๐—น๐˜† ๐—ณ๐—ผ๐—ฟ ๐—ฎ ๐—ฑ๐—ผ๐—บ๐—ฒ๐˜€๐˜๐—ถ๐—ฐ ๐—ฎ๐—ฝ๐—ฝ๐—น๐—ถ๐—ฐ๐—ฎ๐˜๐—ถ๐—ผ๐—ป?

16/05/2022

As China implements the International Registration (IR) system and is a member of the Madrid Agreement and Madrid Protocol, foreign brand owners are entitled to extend IRs into China. The commercial needs of each brand owner will determine whether IRs or a domestic application should be chosen.

In this part of the series, our Partner, Valerie Suen, will discuss the various aspects that foreign brand owners may consider when making the decision:

Scope of protection: China implements a unique subclass system where similar items in a Nice Class are grouped into a subclass. Many foreign brand owners are unaware of this system and their IRs do not cover all subclasses in a Class. This can lead to gaps in protection and hijacker marks may be accepted despite having an IR extended into China.

Examination standards: IRs designating China are often examined by a separate team of examiners. As these examiners see more foreign brands, different citations or objections may be raised when compared with a domestic filing.

Challenges: Brand owners are informed of non-use cancellations in China through WIPO. As a local agent is not notified, this may lead to delays in receiving notifications and adverse cancellation decisions may be issued against the IR extended into China before a brand owner is aware.

Enforcement: Certificates are not automatically issued for IRs extended into China. Brand owners will need to apply to the China National Intellectual Property Administration (CNIPA) for a registration certificate. This can cause issues for foreign brand owners who need to litigate or enforce their rights in China or satisfy requirements set out by e-commerce platforms. For any enquiries about International Trademark Registration, please feel free to speak to our partner Valerie Suen or counsel Vivian Or!โ€