In this part of the series, our Partner, Valerie Suen, will discuss whether a Chinese brand owner should use the IR system or a direct national application overseas.

China implements the International Registration (IR) system and is a member of the Madrid Agreement and Madrid Protocol. Chinese companies and nationals are entitled to apply IRs through the China National Intellectual Property Administration (CNIPA) and WIPO, using their People’s Republic of China (PRC) trade mark applications / registrations as base marks.

IRs are a convenient way for Chinese brand owners to extend their trade mark protection overseas, especially if the base mark is already registered. IRs are convenient to manage and costs are generally favourable if 10 or more foreign jurisdictions and involved.

However, since a People’s Republic of China (PRC) mark is used as the base mark, the list of goods and services for overseas designations must be the same. This may be an issue as the CNIPA requires PRC marks to list only Nice standard items or China-specific acceptable items, and this may be too restrictive.

Similarly, most retail services and Nice class headings which are popular with brand owners and items such as gambling-related services are not allowed in China, and cannot be designated through an IR into overseas jurisdictions.

For any enquiries about International Trademark Registration, please feel free to speak to our partner Valerie Suen or counsel Vivian Or!