Madrid Protocol for UAE Brands: Things to Be Wary of while Designating China
The Madrid Protocol is a highly cost-effective way to secure trademark protection in more than 125 countries through a single application. Moreover, you can add the countries of interest from a designated list of members, including China. Each designated country will examine your International Trademark application as per the local trademark legislation. This is where you need to be cautious as any objection or refusal may affect your entire international registration.
It means you need to be aware of the IP laws of the designated countries before deciding to register a trademark there. Trademark agents in the UAE can provide you with the necessary information on the IP laws of countries such as China. UAE brand owners wishing to register a trademark in China through the Madrid Protocol can read the following blog:
UAE Brand Owners Must Be Wary of Sub-Class System
Registering a trademark in China is unique due to its goods and services classification system. Just like the UAE and many other countries, China also uses the Nice classification system of 45 classes. However, China also uses the sub-classification system. It means there are sub-classes within the Nice classification system.
Chinese trademark examiners pay more attention to these sub-classes, making the process more intricate. Complicating things further, China’s sub-classification system also involves cross-classification (across Nice classes) for similarity. It means that one sub-class within a Nice class may be cross-classified with another subclass in a different Nice class.
Goods and Services in China Cannot Be Broader
If you have designated China under the Madrid Protocol application, you need to ensure that the goods and services are not broader than the goods and services covered in the original application or registration. The China Trademark Office (CTMO) may request further information along with issuing a provisional refusal. You can navigate this issue by ensuring the goods or services are extremely precise and for a limited list of items. Consult with trademark agents in the UAE for further information.
Delay in International Trademark Registrations
Seeking trademark protection in China through the Madrid Protocol may take longer than a National Application. This is because CTMO has between 12 to 18 months to examine any application filed through the Madrid Protocol. UAE brand owners need to keep this delay in mind while deciding to register a trademark in China through the Madrid Protocol.
No Automatic Issuance of Trademark Registration Certificates
The CTMO doesn’t automatically issue a trademark certificate for successful trademark registrations under the Madrid Protocol. Once a trademark is successfully registered in China through the Madrid Protocol, you need to apply for a trademark certificate. Just like the National Application, UAE brand owners need to apply for a Chinese Trademark Certificate using local trademark agents.
A Chinese trademark certificate is critical for you to enforce your registered marks in China. Additional costs are involved in applying for a trademark certificate in China. Moreover, it may take 3-4 months from the date of application to get your trademark registration certificate issued in China.
The Issue with Amendments in Ownership
Any changes made to the ownership of a Madrid Protocol registration will take a long time to reflect on the CTMO register. Once the changes are recorded, the CTMO will not issue a certificate to show the amendment and the correct trademark owner. Usually, trademark owners apply for a correct certificate indicating the updated information from the CTMO.
Deadline for Responding to Oppositions
If a third party wants to challenge the validity of a Chinese designation of a Madrid Protocol, the notice can be sent directly to the applicant instead of the recorded representative. Such notifications may be ignored which can lead to the cancellation of the Chinese designation if the deadline set by the CTMO to file a response is not met. Advice from trademark agents in the UAE can become useful to navigate this challenge.
Hire the Best Trademark Agents in the UAE
China is a key market no one can ignore when it comes to international trade. If you have a business interest in China, you can use the Madrid Protocol to protect your trademarks. Brand owners seeking an end-to-end solution for their Madrid Protocol application can seek help from trademark agents in the UAE such as Jitendra Intellectual Property (JIP). JIP offers bespoke trademark services in Dubai at cost-effective rates. Our services include trademark registration, trademark search, and trademark watch services. With our assistance, you can file a trademark not only in the UAE but across the GCC and more than 125 countries that are part of the Madrid Protocol. Enjoy hassle-free trademark registration using JIP’s robust trademark protection strategies.