China's significant consumer market attracts many international brands, making it crucial for businesses to secure design and trademark protection within the country. There are two main pathways for securing these rights: applying directly in China or through international systems like the Hague International Design Registration System and the Madrid International Trademark Registration System. This article compares these two routes and examines the pros and cons of each for obtaining design and trademark protection in China.
Examination Procedures and Timelines
Chinese Design Patent Applications: These applications involve three stages: filing, preliminary examination, and grant. The China National Intellectual Property Administration (CNIPA) typically grants design patents within five to eight months if no objections arise during the preliminary examination.
International Design Applications Designating China: When filed through the Hague System, the World Intellectual Property Organization (WIPO) initially reviews the application. Once registered, it is published internationally, after which CNIPA examines the application within 12 months. Obtaining protection through this route usually takes between 15 and 24 months.
Application Basis and Applicant Eligibility
Direct Application in China: Individuals or enterprises from countries with bilateral or multilateral agreements with China can file design applications directly.
Hague International Registration: Nationals or enterprises from countries party to the Hague Agreement can apply for design protection in China through international registration.
Trademark Protection Routes
Examination Process
National Applications in China: CNIPA conducts both formal and substantive examinations of trademark applications. After passing these stages, the trademark is preliminarily approved and published. If no objections arise during the publication period, registration is completed within nine months.
Madrid System Applications: For international trademark registration through the Madrid Agreement, China’s examination takes 12 months. For registrations via the Madrid Protocol, the examination period extends to 18 months. This is generally longer than the timeline for direct national applications.
Filing Date Considerations
A Madrid application’s filing date depends on when WIPO receives the application from the applicant’s national trademark office. Delays can affect the enforcement of trademark rights, potentially impacting claims for priority rights.
Key Differences in Examination Standards
Design Applications: CNIPA applies stricter standards to Chinese design patent applications compared to international applications. Rigorous checks are conducted on the design drawings, and certain errors can be corrected through amendments. In contrast, CNIPA is more lenient with international design applications, especially in regard to formal defects such as shadow lines in the drawings.
Trademark Applications: While the substantive examination for Madrid applications follows the same standards as national applications, there is greater flexibility with the names of goods and services. The trademark office typically accepts non-standard names in international applications, making it easier to register emerging products or services in China.
Fees and Certification
Design: Filing fees for Chinese design patent applications are approximately 580 yuan, with no extra charges for up to 10 similar designs. International design registration fees start at 1,013 Swiss francs.
Trademark: Filing fees for national trademark applications in China are generally lower than those for Madrid system applications, where fees are calculated in Swiss francs.
Certification of Rights
Chinese Design and Trademark Applications: CNIPA issues certificates for successful national applications. For international applications, CNIPA grants statements of protection, though applicants can request a formal certificate for proof of rights in China.
Risks and Stability of Rights
Design: The risk of rejection is lower with a well-prepared Chinese design application. For international applications, compliance with the design standards of each designated country is essential to avoid issues that might arise due to differing formal requirements.
Trademark: National applications offer more stability, while Madrid applications are vulnerable to the "central attack" principle, where invalidation of the home registration could affect the protection in all designated countries within the first five years.
Combining Both Routes
For applicants seeking protection solely in China, direct national applications are often more cost-effective. However, for those targeting multiple countries, the international systems offer broader, more convenient protection. In some cases, applicants may combine both routes, using Madrid applications for broader coverage and filing separate national applications in China to ensure compliance with stricter local standards.
In conclusion, choosing between the two routes—direct application in China or international registration through Hague or Madrid systems—depends on the specific goals, timeline, and geographical scope of protection sought by the applicant.
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