Madrid-system international registration regulations in force
The Implementation of International Registration of Marks under the Madrid System regulations have come into force. They replace regulations that had operated since March 1996. The new regulations set out the procedures for (i) filing an international registration where China is the country of origin, and (ii) designating territorial extension to China under the Madrid Agreement and Protocol.
Some of the most important provisions governing international registration with China as the country of origin include the following:
- An applicant for international registration must be either a Chinese national, have residence in China, or have a real and effective place of industrial or commercial operation in China.
- In order to apply for registration under the Madrid Agreement, the trademark must be registered with the Chinese Trademark Office (CTO); whereas an application under the Madrid Protocol requires that the mark be registered or be the subject of a pending application with the CTO.
- All applications must be lodged with the CTO.
- Registration fees shall be paid through the CTO.
- An application for international registration may cover multi-classes.
- The International Bureau of the World Intellectual Property Organization (WIPO) can deal with a number of matters directly. These include assignment, deletion, change of name and renewal. In applications under the Madrid Protocol, the bureau can also deal with subsequent designation, assignment, abandonment and cancellation.
Some of the most important provisions governing designation of territorial extension to China include the following:
- After the publication of an international mark by WIPO, any opposition must be filed with the CTO within three months of the first day of the month following publication.
- For the extension of a collective or certification mark to China, the certificate of qualification and the rules for the administration of the use of the mark must be submitted to the CTO within three months of the date of entry in the International Register.
- Where an assignment is not simultaneously recorded and the situation is not rectified within 30 days of receipt of notification by the CTO, the assignment will be held to be invalid in China.
- Licences relating to international trademarks must be registered in accordance with the Trademark Law.
- The Trademark Review and Adjudication Board can hear applications for the cancellation of a registration or other dispute where the registration extends to China.
- The owner of an international trademark that has been extended to cover China may request a certificate from the CTO confirming that the mark is protected in that country.
Sandra Gibbons, Lovells, Hong Kong
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