Madrid Protocol – More Needed for China Enforcement

Introduction

The Madrid Protocol, associated with but separate from the Madrid Agreement, is an international agreement about trademark registration. Registration of a trademark in a member jurisdiction can be extended to other member jurisdictions. It is very convenient and cost effective to register in multiple jurisdictions. It does not always work perfectly, however, because the detail of the registration process is not identical in every member jurisdiction. Using the Madrid Protocol does not change that. Unfortunately, despite being such an important trademark jurisdiction, China is one where the operation of the Madrid Protocol can be problematical. Our general recommendation is that if China is an important business jurisdiction, direct filing in China is preferable.

The China Trademark Registration Certificate

The China Trademark Registration Certificate is evidence of registration of a China trademark. It is an important document for enforcement and use of a trademark in China. Unfortunately, it is not routinely issued when a trademark is filed using the Madrid Protocol. China trademarks filed that way receive a Statement of Grant of Protection, which is not the same thing.

Without the China Trademark Registration Certificate, many remedies and enforcement tools are not available in China.

The China Trademark Registration Certificate, for example, is essential evidence for a Chinese court to enforce a China trademark. It is also required to register with the China Customs for border trademark protection. If a trademark is registered with China Customs they have the power to stop infringing goods crossing the border. A very important enforcement tool that is not used as often as it could be by foreign trademark owners.

E-commerce platforms in China also usually require the China Trademark Registration Certificate to be provided before their platform can be used.

The Madrid Protocol – getting the China Trademark Registration Certificate

Once a China trademark has been successfully registered using the Madrid Protocol, a China Trademark Registration Certificate can be applied for. As with a trademark filed directly in China, a local trademark agent must be used to get the Trademark Registration Certificate. There is a 12/18 month period dating from the date of Madrid Protocol notification which must have elapsed before applying for the China Trademark Certificate. If the applicant country is a member to the Madrid Protocol only (such as the USA), the period is 18 months. If the applicant jurisdiction is a member to both the Madrid Protocol and the Madrid Agreement (such as the Netherlands), it is 12 months. Typically, it takes 3-4 months from the date of application for the China Trademark Registration Certificate to be issued.

Commentary

China is a very important trademark jurisdiction but has its quirks that do not always mesh perfectly with the Madrid Protocol. Balancing the expediency of using the Madrid Protocol against the certainty of filing directly in China is a task that a prudent IP professional or brand owner will take seriously.

Take-aways

  • The Madrid Protocol is not equally convenient and cost effective in every jurisdiction where it can be used.
  • The detail of China’s trademark regime needs to be taken into account before a decision to use the Madrid Protocol to register a trademark there.
  • The Madrid Protocol’s Statement of Grant of Protection does not give the same benefits in China as the China Trademark Registration Certificate.
  • Price is only one of the considerations in registering a China Trademark – knowing how it all works on the ground is the key.

Contributing Advisors