Overcoming the Notification of Ex Officio Refusal of International Registration of Trademark in China
1. A basic introduction of the Madrid system:
The Madrid System is a system of international registration of trademarks, which must be based on a national application (the “basic application”) where the international application is governed exclusively by the Madrid Protocol or registration (“the basic registration”) in the Trademark Office of the Contracting Party
2. The phases/stages of the international application for a trademark
An international application for a trademark must be made in the prescribed form and presented to WIPO (the international bureau) through the office of origin.
An application for international registration must designate one or more contracting parties in which the mark is to be protected. It may not designate the contracting party whose office is the office of origin. In other words, a Chinese applicant may not include China as one of the designated contracting parties. A Chinese applicant may benefit from the fact that China is a member of both the Madrid Protocol and the Madrid Agreement however, so that the designation may be extended into all countries who are also members of the Madrid Union, regardless of whether they are contracting parties of the protocol or the agreement.
If the application of the Madrid trademark-designating China is refused by the China Trademark Office (CTMO), and you wish to file an application of review against refusal it must be filed within 15 days of receipt of the notification issued by WIPO. If the applicant misses the time limit due to the receipt date of the notification being illegible or absent, the request can be filed within 30 days. If the applicant wants to supplement evidence for review, it must be submitted within 3 months from the date the review was requested.
4. Necessary documents:
a. A copy of the duly executed Power of Attorney;
b. A copy of the certificate of Incorporation for an Enterprise/Copy of a passport or other identification certificate for an individual applicant
5. What service could we provide?
a. Reasonability of a Provisional Refusal
b. Information about use of a cited mark (if applicable)
c. Responses to be made to overcome a Provisional Refusal
d. Likelihood of success in each response
e. Estimate of costs for each response