Filing a trademark directly in China has many advantages over going through WIPO. The success of your business may depend on it.
Registering a trademark is a crucial first step in securing your brand’s place in the marketplace and protecting it from unauthorised use. In a market as powerful as China, this can be critical to a company’s success. Many companies wonder how best to protect their trademark in China – whether to file directly in China or to use the International System for the Registration of Marks (also known as the Madrid System) through the World Intellectual Property Organisation (WIPO). In this article, we will outline the advantages of filing directly in China.
The main advantage of filing locally in China is the speed of the decision. It must be objectively acknowledged that the Chinese authorities have made great strides in this area. By streamlining the process of receiving and processing applications, the China Trademark Office (CNIPA) is able to issue an initial decision within 10 weeks from the filing date. Of course, a good selection of products or services is key. At Trademark Partners, we have years of experience in this area. We are proud to say that the fastest registration we have done in China took only …. 5.5 months. After 5.5 months, we provided the client with certificates of protection for their trademarks. The benefits of filing locally do not end there.
The designation of products and services is key to a smooth process of substantial examination of an application for trademark protection in China. The best practice is for the local patent attorney to select the products and services to be filed for protection in China. This is because he or she selects products from a standard list approved by the CNIPA. And although China has acceded to the Nice Agreement in respect of trademarks, the list of products and services may differ somewhat. One difference is CNIPA’s organisation of the list into classes and subclasses, which is important for the success of an application. And this is what we at Trademark Partners strive for – maximum efficiency of the filed applications.
Major Chinese trading portals such as Tmall, JD, Pingduoduo or even WeChat allow the opening of business trading accounts. These types of accounts are the most prestigious form of trading and are trusted by consumers. The same goes for communication accounts on social media, where brands can publish promotional content. However, setting up such accounts requires a trademark registration and a local trademark registration certificate. What’s more, even when interviewing a potential importer for a product launch to a typical retailer or offline, you will quickly be met with a request from the Chinese partner to show such a certificate
Applying for trademark protection through WIPO is certainly convenient, as you can select the countries of interest in one application and exercise your right of priority. At the same time, we must bear in mind that we are applying through an international institution, which is important limit in terms of speed.
They have to process the application in their own organisation and then send it to the local patent office, which of course takes time. By filing directly with the local patent office, you save a lot of time. And not only during the application process, but also in the event of a refusal.
If there are problems with the application, you can react quickly and effectively by acting locally. The local attorney has direct access to the grounds for refusal, understands the language of the refusal and we can work together to develop an appeal strategy.
With a WIPO application, the time to respond may be too short. You will also need to find an attorney to prepare the appeal anyway.
Finally, the cost and complications of providing original documents to a local ombudsman may be an additional obstacle. At Trademark Partners we always prefer to act locally. We know from experience that it is more efficient.
With a WIPO application, the time to respond may be too short. You will also need to find an attorney to prepare the appeal anyway.
Finally, the cost and complications of providing original documents to a local ombudsman may be an additional obstacle. At Trademark Partners we always prefer to act locally. We know from experience that it is more efficient.
The Chinese trademark protection certificate is a very important document. It is required for the opening of business and trademark communication accounts. It is essential for border protection procedures of the trademark or pending disputes. Once these arise, there is no time to apply to the local office for a local copy of the registration certificate.
All of this makes filing a local trademark application in China the most advantageous option for companies that are serious about the Chinese market. It is also the fastest form of application.
