The Madrid System is known for its efficiency and cost-effectiveness when it comes to global trademark registration and management. This system streamlines the process by allowing applicants to submit a single application and pay a unified fee, making it a popular choice among trademark applicants worldwide.
China's rapidly growing market has become increasingly attractive to investors. As a result, there has been a significant surge in the number of trademark applications using the Madrid System that designate China as a protected territory. It's important to note, however, that receiving a certificate from the International Bureau post-application doesn't mean successful trademark registration but indicates that the application meets the necessary requirements.
The China National Intellectual Property Administration (CNIPA) retains the authority to reject protection within specified timelines unless a refusal notice is issued to the International Bureau. If CNIPA fails to act within the prescribed timeframe, typically 18 months, the trademark is automatically approved. In such cases, CNIPA will only issue a statement of grant of protection. Please note that no certificate will be issued by the Office.
This situation raises an essential question: How can you validate your exclusive trademark rights when enforcing them in China? The answer lies in obtaining a certified copy of a registration certificate.
ⅠUnderstanding the Certified Copy of a Registration Certificate and International Registration Certificate
A certified copy of a certificate serves as evidence that the trademark owner has secured trademark rights in China under the Madrid System. It holds legal equivalence to the trademark certificate and provides convenience to the trademark owner.
Conversely, the certificate of an international registration is issued to the trademark holder by the International Bureau after filing an international trademark application through the Madrid System. However, this certificate does not confirm successful trademark registration but signifies that the international application complies with the applicable requirements, allowing it to be included in the International Register.
Ⅱ Distinguishing Between a Certified Copy of a Registration Certificate and an International Registration Certificate
Issuing Authority: CNIPA issues the certified copy of a registration certificate, potentially incurring additional fees, while the International Bureau issues the international registration certificate.
Implications: The international registration certificate merely indicates that the application meets the necessary requirements and is recorded in the International Register. In contrast, the certified copy of a registration certificate confirms that the trademark right has been granted.
Procedures: To obtain the international registration certificate, the applicant must file an international application along with a basic national trademark application/ registration. After a preliminary examination, the International Bureau issues the certificate. However, this certificate currently lacks legal effect in contracting countries. To receive a certified copy of a registration certificate in China, implying an approved and protected trademark, the trademark owner must submit a request to CNIPA.
Ⅲ Procedure for Obtaining a Certified Copy of a Registration Certificate
To obtain a certified copy of a registration certificate, the trademark holder must engage a local trademark agency to submit a request along with the following documents:
1. Identification documents of the trademark owner.
2. A soft copy of the executed power of attorney.
3. The international registration number of the trademark.
Typically, the certified copy is issued approximately 2-3 months after filing the request. While not mandatory, having a certified copy in China significantly simplifies the enforcement of your trademark rights.
Ⅳ Here are some benefits of obtaining a certified copy of a Registration Certificate:
1. Enforcement of Rights: A trademark registration certificate serves as crucial evidence in intellectual property infringement or trademark infringement cases. Companies holding a certified copy of trademark registration certificate can more easily prove their legitimate ownership of the trademark and take legal action to protect their trademark rights.
2. Customs Filing: Many countries' customs departments require businesses to provide a trademark registration certificate when importing and exporting goods. A certified copy of a registration certificate in China for International Registration is also applicable. This helps prevent the circulation of infringing products and protects the rights of legitimate trademark owners.
3. Brand Registration on E-commerce Platforms: E-commerce platforms like Alibaba, Taobao, JD.com, Amazon, and others often require brand owners to provide a trademark registration certificate for brand registration. A certified copy of a registration certificate in China for International Registration is also applicable. This helps the platform ensure that only legitimate brand owners can sell products on their platforms.
4. Business Contracts and Partnerships: A trademark registration certificate can play an important role in business contracts and partnerships, such as licensing agreements, franchise agreements, and partnerships. A certified copy of registration in China for International Registration is also applicable. It can demonstrate the legitimate rights of the trademark owner and strengthen the enforceability of contracts.
The importance of obtaining a certified copy of a registration certificate in China cannot be overstated, as it has multiple crucial implications for your brand and business. Therefore, businesses and brand owners should actively pursue trademark registration to ensure the legitimacy of their trademarks and full protection of their rights.