𝗜𝗻𝘁𝗲𝗿𝗻𝗮𝘁𝗶𝗼𝗻𝗮𝗹 𝗥𝗲𝗴𝗶𝘀𝘁𝗿𝗮𝘁𝗶𝗼𝗻𝘀 𝗦𝗲𝗿𝗶𝗲𝘀 𝟭/𝟲
𝗜𝗻𝘁𝗲𝗿𝗻𝗮𝘁𝗶𝗼𝗻𝗮𝗹 𝗧𝗿𝗮𝗱𝗲𝗺𝗮𝗿𝗸 𝗥𝗲𝗴𝗶𝘀𝘁𝗿𝗮𝘁𝗶𝗼𝗻𝘀: 𝗧𝗮𝗸𝗶𝗻𝗴 𝘆𝗼𝘂𝗿 𝗯𝗿𝗮𝗻𝗱 𝗶𝗻𝘁𝗼 𝗖𝗵𝗶𝗻𝗮. 𝗪𝗵𝗮𝘁 𝗵𝗮𝗽𝗽𝗲𝗻𝘀 𝘁𝗵𝗲𝗻?
Many brand owners take advantage of the International Trademark Registration system to protect their brands worldwide. In our new series, we will highlight some of the common issues and misconceptions surrounding International Registrations.
An International Registration (IR) is a bit of a misnomer though as brand owners have to choose where the IR will be protected, and the scope of protection will depend on the laws of individual jurisdictions. If you have IRs extended into China, it will always be best to have a reliable local Chinese agent on hand in case you encounter refusals which need to be reviewed at short notice.
Once you apply for an IR through the World Intellectual Property Organization (WIPO), you can designate China as a jurisdiction you want to protect your brand. WIPO only examines an IR for formalities and leaves it to the local China National Intellectual Property Administration (CNIPA) to determine whether protection should be extended and how wide the protection should be.
The CNIPA will examine the application to ensure it complies with local laws and rules and must finalize the examination within 12-18 months.
If the IR does not comply with local requirements, a notification will be sent through WIPO to the agent on WIPO’s record. If the brand owner does not agree with the refusal, a review may be filed through a trademark agent in China within 30 days of WIPO’s notification. Supplemental evidence may also be filed within three months of the review.
Given the time constraints with China refusals, brand owners and their WIPO agents should always have a reliable Chinese trade mark agent on hand to assist in case refusals are issued. Approach your local partner immediately when you receive a WIPO notification and discuss deadlines and options as soon as possible.
Contact our Partner Valerie Suen or Counsel Vivian Or for more information!