Overcome the Notification of Ex Officio Refusal of International Registration of Trademark in China


     By Borsam Intellectual Property

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How to respond to the ex officio refusal(provisional refusal) of International Registration(IR) of trademark in China?--Guidance to trademark review of refusal

The basic introduction of madrid system are as follows:

1. what is Basic application and basic registration
An international registration of trademark must be based on a national application (the “basic application”) where the international application is governed by exclusively by the Madrid Protocol or registration (“the basic registration”) in the Trademark Office of the Contracting Party.

2. The phase/stage of International application of trademark
An international application of trademark must be made in the prescribed form and presented to the International Bureau through the Office of Origin.

3. Designation
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 or Origin. In other words, a Chinese applicant may not include China as one of its designated Contracting Parties. A Chinese applicant may benefit from the fact that China is a member of both Madrid Protocol and Madrid Agreement, so that the designation may be extended into all countries members of the Madrid Union regardless that countries are Contracting Parties of the Protocol or Agreement.

Once the application of Madrid trademark designating China is refused by China Trademark Office(CTMO), the application of review against refusal shall be filed within 15 days from the receipt of the Notification issued by the WIPO. But the time limit of requesting trademark review has a little change now, if the applicant miss the 15 days time limit as the receipt date of the notification is illegible or absent, the request could be filed within 30 days since the send date by the International Bureau of WIPO. And if the applicant wants to supplement evidence for review, it should be submitted within 3 months since the request date of review.

The Necessary Document are as below:
1) A Copy of Duly Executed Power of Attorney.
2) Copy of Certificate of Incorporation for Enterprise./Copy of the passport or other identification certificate, for individual applicant.

4. What service could provide?
1) Reasonability of a Provisional Refusal
2) Information about use of a cited mark (if applicable)
3) Responses to be made to overcome a Provisional Refusal
4) Likelihood of success in each response
5) Estimate of costs for each response

For more information, please refer to www.borsamip.com.

ABOUT THE AUTHOR: Borsam IP Law Firm
Borsam is a professional I.P. law office, which consists by I.P. attorney, patent attorney and trademark attorney with ten-year experience and cooperates with Taiwan professional patent/trademark attorney. Borsam establish a long cooperation with I.P. firms of more than fifty countries.

Our aim is to assist individuals and organizations to maximize the potential of their intellectual property and to minimize the risks faced from exposure to third party rights. We deal with patents, copyright, trademarks and associated issues in China, Hong Kong , Taiwan, USA, Europe and worldwide.

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Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.