The system of Madrid international registration is an important component of the protective system for trademarks in the worldwide. Many commercial subjects of the member states of the Madrid Convention will perform their trademark strategy in other member states through Madrid system for the international registration because of convenient procedure for the registration. Obviously, in the course of extending the exclusive right of international registration to different countries, it needs to go through the examination of the local trademark authority of target member states, if the extension of exclusive right of international registration in one country went against the relevant regulations and laws of this country, it will also be rejected. So, what points should attorneys pay attention to when they process such cases of review of rejections regarding the extension of international registration to China? The writer will share relevant experience through the case below: 

Regarding the administrative lawsuit case under (2019) Jing 73 Xing Chu No. 1459, the complaint, Lilleberg, Inc., file the lawsuit to Beijing Intellectual Property Court, due to appeal against the decision on review of the refusal of the trademark “JORDAN” under international registered No. 1305677, which was issued by the respondent, National Intellectual Property Administration, P.R.C., under Shang Ping Zi [2018] No. 0000165275. The case’s complaint filed the lawsuit to the rejection of the application for the extension of the applied-for trademark on goods “cleaning articles, including toothbrush, inter-toothbrush, toothpick, dental floss” in China. As per the defendant’s decision, there were 3 trademarks posed as prior obstacle for the plaintiff’s application for the registration on the goods under Class 21, including two of those have been revoked due to non-use for consecutive three years, and the decision has come into effect. The third trademark is “乔盾JORDON”(QIAO DUN in Chinese character) under Reg. No. 15391479, the designated goods are “gloves for household, polishing gloves, gardening gloves” under Class 21 (group 2112), however, the goods of the applied-for trademark “cleaning articles, including toothbrush, inter-toothbrush, toothpick, dental floss” covers group 2108/09/12.

The above case shows, the goods of the applied-for trademark have been blocked by the prior registration of the trademark with Reg. No.15391479 on the group 2112. Whereas the specialty of the international registration, the description of goods will not be automatically transferred into standard goods according to the classification table, the information of relevant goods of the international registration will be remained (in fact, it is consistent with the description of the basic registration when the trademark applied for the international registration), and then, after examiners of the international office of National Intellectual Property Administration to translate them into Chinese, goods will be classified to relevant groups of the classification table as per the functions and characters involved in the descriptions. In other words, the description of the identical goods of the international registration may cover many different groups, taking the goods of the applied-for trademark “cleaning articles, including toothbrush, inter-toothbrush, toothpick, dental floss” as an example, it involved with the goods “toothbrush articles” in the group 2108, the goods “toothpick” in the group 2109 and “household appliances” in the group 2112, as a result, the goods covers three sub-groups above at the same time. 

So, here comes questions, a certain goods of the international registration covers many groups, as long as one group has the obstacle posed by the prior registration, hence, the application for the extension of exclusive right of the international registration over the goods will not be approved, this is also the problem encountered by the party concerned. Carefully reviewed the goods of the applied-for trademark, i.e. “cleaning articles, including toothbrush, inter-toothbrush, toothpick, dental floss”, you should find the text description mainly focused on “toothbrush, inter-toothbrush, toothpick, dental floss”, these goods only connected with “toothbrush articles” under the Group 2108 and “toothpick” under the Group 2109. Moreover, the grounds for determining the goods also covered the goods “household appliance” under the Group 2112, was that the description includes “cleaning articles”. Such kind of broad descriptions are more common in the international registration, it seems can reflect board exclusive use right, however, it may pose problems during the extension of exclusive use right to China. Due to the broad coverage of such kind of descriptions, it may result in many obstacles due to the coverage of many small groups, and then, the applied-for trademark may not be approved to register in China due to the prior obstacle. 

To understand the grounds of the existence of obstacles will be helpful for resolving such kind of cases. Attorneys should advise the applicant of the trademark to proceed query and to find out the existing obstacles, also to work out how many groups have been covered by these “obstacles” that block the application of the extension of exclusive use right of the international registration, and then, to screen out the scope of the exclusive use right covered by the applicant’s international registration. If the designated goods of the international registration covered goods under many groups due to the broad description, for the purpose to reduce the obstacle of the registration, the applicant should be advised to submit the application for goods limitation to WIPO. Back to this case, regarding this case, if the goods can be limited to “toothbrush, inter-toothbrush, toothpick, dental floss” when the applicant filed the application for extension, also narrowed actively the scope of the exclusive use right, hence, the “obstacle” posed by the cited trademark mentioned above can be avoided. After submission of the limited application, WIPO will complete the application around 3 months and then will make announcement, and then WIPO will deliver relevant notices to the international department of State Intellectual Property Office for the further examination, the further examination will required around 3 months. After the completion of the examination, the State Intellectual Property Office will change the information of the trademark, the changed information can be checked through China trademarks filing system.

However, in this case, the application for the extension of the exclusive use right over the international registration has gone through the review, then, even if the applicant filed the application for the limited goods, it will be considered as an application for the registration of a new trademark. As per the principles of examination, the goods could only be waived rather than deletion. Even though the designated goods of the international registration are different from the description in the classification, the principle should be followed. 

We can conclude from the proceed of this case that, in the course of the localization (translation) of the non-standard goods of the international registration, it is easy to pose unnecessary prior obstacle, hence, as per the client’s main business scope and specific situation of the goods, the attorney shall advice the client to narrow the scope of the exclusive use right, to avoid the obstacle through “differentiation”, and then make successful registration. 

The legal support team which was leaded by Ms. LI Shuhua, the attorney came from Janlea Law Firm, offered the LILLEBORG AS with full legal service during the first and second instance.