Do I Have Coverage in China if I Register My IP Via WIPO/ Madrid System?
Have you found yourself wondering if you have coverage in China if you register your IP via WIPO/ Madrid System? If so, read below what each is and how they work.
Background on WIPO and Madrid System: (Coverage in China)
The World Intellectual Property Organization (WIPO) is a United Nation’s agency that primarily focuses on protecting both industrial property (inventions, trademarks and designs) and copyrighted materials through working international organizations to promote and help economic issues.
Wikipedia explains:
The Madrid System (officially the Madrid system for the international registration of marks) is the primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world.
In theory,
the Madrid system provides a centrally administered system of obtaining a bundle of trademark registrations in separate jurisdictions. Registration through the Madrid system does not create a unified registration, rather, it creates a bundle of national rights through an international registration able to be administered centrally.
One-stop-shop for global TM registration?
Does it sound too good to be true? In terms of China IP, you should be aware of the following if you are considering to file via WIPO.
No chance to revise or adjust application when using WIPO
Some international companies filing a trademark through Madrid System may end up wasting resources and even face getting rejected after waiting for 12 to 18 months. Normally, no pre-application screening is performed and no chance to revise an application when you use the Madrid system. That step is available if you register you IP with a Chinese lawyer directly in China.
Lack of protection under WIPO
Even though the trademark has been officially registered in China through WIPO, troubles about imposing the company’s rights may arise in the long run. Although WIPO certificate state the company’s rights under Chinese trademark law, in actual business and legal application, the Chinese authorities and Chinese business associates frequently do not acknowledge the certificate provided by WIPO, instead they will require a copy of a certificate issued by Chinese Trademark Office (CTMO)!
Knowing WIPO is not knowing China
Chinese trademark law is complicated and very different from overseas. Many problems crop up when using international lawyers who are knowledgeable when filing in WIPO but have no experience about China side issues.
Some good news about IP registration in China
Luckily it’s fast and affordable. Plus you don’t need to be a China based business or individual to own IP in China!
China Patent Office follows a "first to register" not "first to market" system.
2 very practical benefits of registering IP in China directly and bypassing Madrid/WIPO
- You can decide the subclasses that you want to cover in your application. But when you file in the Madrid system they will select which subclasses for your application without consulting you.
- It is possible to have a substantial examination in advance when you file in China and you can adjust your application during the process, based on the outcome of the examination.
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ABL Blog: Sr. Editor and Primary Content Creator: Michael J. Bellamy
Originally from Upstate New York, Mike moved to Asia in 1993 and is a China business advisor to both Fortune 500 companies and small businesses. Recognized as an expert on doing business in China, he has been interviewed by WSJ, CNBC, FT & Bloomberg.
A featured presenter on China issues at seminars, trade shows and corporate events across the globe.
Learn more about Mike and AsiaBridge Law at
https://www.asiabridgelaw.com/business-advisory-services/
Mike is the author of “The Essential Reference Guide to China Sourcing”
(available on Amazon).