One size may not fit all: International registrations in China

When protecting a brand in China, a brand owner can choose either to file a national Chinese trademark application at the China National Intellectual Property Administration (CNIPA) or file an international registration (IR) through the World Intellectual Property Organization (WIPO), which designates China. An IR designating China can be an attractive option for the following reasons:

• it is easy. The brand owner simply designates China on the electronic application form on the WIPO website
• it can be cheaper than a Chinese national trademark application
• the brand owner does not need to engage a local law firm in China

However, brand owners should be aware of the following risks of using IRs in China:

Clearance searches

Brand owners who file using an IR rarely undertake pre-clearance searches in China. However, pre-clearance searches matter more in China because the consent of an existing registered trademark owner is not guaranteed to overcome a block and overcoming a block by other means, such as non-use cancellation proceedings, is a time-consuming Additionally, the CNIPA will frequently not stay the prosecution of an application until the outcome of the other proceedings, meaning it is important to file any non-use cancellation action or invalidation as soon as possible.

China's sub-classification system

A key reason why IRs go awry in China is that they are not drafted in a way that takes account of the Chinese system of sub-classification. This can significantly delay prosecution of the IR in China as any items within a specification which are not considered "standard" result in the IR being rejected. The brand owner then has to appeal that rejection to the Trademark Review & Adjudication department of CNIPA. In contrast, Chinese national applications which contain non-standard items will be initially refused but the applicant is given an opportunity to amend the specification before a rejection is issued, potentially avoiding the need for a costly appeal.

Gaps in protection

IR specifications which have not been tailored to the China sub-classification system can result in significant gaps in sub-class protection, leaving the mark open to piracy even if the IR has been registered. These gaps could then be "filled" by a trademark pirate. As a result of the mechanical approach to assessment, we recommend selecting at least one standard item from each relevant sub-class within a specification, so that the entire class in which a mark is registered is "covered off" and there are no "gaps" in sub-class coverage.

Examiner discretion

As IR specifications are not drafted to take account of the Chinese system of sub-classification system, the CNIPA examiner will use his or her discretion to allocate the items in the IR specification to the relevant Chinese sub-classes. We have seen instances where examiners have allocated items to the wrong subclasses, leaving gaps in the protection given by the IR. Those gaps can then be exploited by a trademark pirate.

Problems with enforcement

Enforcing an IR can also be more problematic than enforcing a national trademark. When a national trademark matures to registration, a trademark certificate is issued. This is not the case with IRs. The brand owner must pro-actively apply for a certificate to be issued. When carrying out enforcement action in China, time is almost always of the essence. Where a brand owner has pro-actively applied for an IR certificate to be issued, this is not a problem. However, where this is not the case, brand owners will be unable to take action until the IR certificate is issued, which can result in a delay of several months.

How DLA Piper can help

Our lawyers can help you by:

• devising a Chinese trademark specification for you which dovetails with the relevant sub-classes to ensure the right "Standard Items" are selected and the entire class of Goods and Services is locked – out, leaving no gaps in protection; and
• conducting an "audit" of your existing Chinese trademark registrations and the manner in which your existing brands are being used in China to:
  • identify class and sub-class deficiencies in your existing trademark portfolio;
  • brands which are being used in China but for which you do not currently have any registered trademarks; and
  • identify brands which are not being used in China but which you may have plans to use in China in the future and for which you do not currently have any registered trademarks.

For more information about how our PROTECT™ service can help you, please see our website at www.dlapiper.com/protect or contact your usual DLA Piper contact.