Special Time Limits for Territorial Extension of Madrid Trademark Registrations to China

The standards of substantive examination on territorial extension request for Madrid trademarks in China are the same as the standards on domestic trademarks in China. However, there are some differences in the calculation of several time limits for the Madrid registrations, including the following ones.

1. Refusal Period

The term of refusal refers to the period of time within which an international trademark registration designating China receives a notice of refusal issued by the China Trademark Office. The period is calculated from the date of notification by the International Bureau, which is shown in the Madrid MONITOR (https://www3.wipo.int/madrid/monitor/en/) as Date of notification by the International Bureau to the designated Contracting Parties (from which the time limit to notify the refusal starts). For an application for territorial extension to China, where the Office of origin is a Contracting Party bound only by the Protocol (e.g., U.S., Japan, EU, etc.), the time limit for refusal is 18 months from the date of notification; for an application for territorial extension to China, where the office of origin is a Contracting Party of both the Agreement and the Protocol (e.g., France, Germany, etc.), the time limit for refusal is 12 months from the date of notification.

The time limit for refusal is very important and is the starting point for calculating a number of other time limits (e.g., time limit of filing non-use cancellations and time limit for filing invalidations, etc.).

2. Time Limit for Review of Refusal

Where the territorial extension request of Madrid International Trademark is rejected by the Trademark Office of China, the trademark applicant should file a review within 15 days from the date of receipt of the notification of rejection, and the date of receipt of the notification of rejection is the date of notification by WIPO to the holder as shown on the WIPO’S notification plus 15 days. Therefore, a more direct algorithm is 30 days from the date of notification by WIPO to the holder. For example, if the date of notification by WIPO to the holder is January 11, 2023, then the deadline for submitting the refusal review is February 10, 2023.

3. Time Limit for Opposition

The opposition period for a Madrid trademark registration designating China is three months from the first day of the month immediately following the month in which the international trademark has been published on the WIPO Gazette, with the last day of the last month as the expiration date. For example, if the date of international publication of the trademark is February 16, 2023, the opposition period will be counted as 3 months from March 1, 2023, and will expire on May 31st, 2023.

4. Time Limit for Non-Use Cancellation

For a Madrid trademark registration that has obtained territorial extension protection in China, anyone can file a cancellation application with the China Trademark Office based on three consecutive years of non-use. The cancellation shall be filed three years after the expiration of the refusal period of the international registration; if the refusal period expires and the territorial extension is still in the process of refusal review or opposition, the non-use application shall be filed three years after the effective date of the decision granting the registration issued by the China Trademark Office.

5. Time limit for Invalidation

Where the invalidation of a Madrid trademark registration is based on the absolute grounds of the Trademark Law (e.g. signs prohibited from registration, signs lack of distinctiveness, trademarks registered by fraud or any other improper means, etc.), the invalidation shall be filed after the expiration of the 12 or 18 months of refusal period in China for the international registration. If the mark is still in the process of refusal review or opposition when the refusal period expires, the invalidation shall be filed after the effective date of the decision of the China Trademark Office on granting the registration.

Where the invalidation of a Madrid trademark registration is based on the relative grounds of the Trademark Law (e.g. signs involving well-known trademark protection, trademark squatting or prior similar trademarks, etc.), the invalidation shall be filed within five years from the expiration date of the refusal period of the international registration. If the mark is still in the refusal review or the opposition upon the expiration of the refusal period, the invalidation shall be filed within 5 years from the effective date of the decision on granting registration made by the China Trademark Office. In the event of bad-faith registration, the owner of a well-known trademark may exempt from the aforesaid five-year time limit.