Trademark protection through international registration under the Madrid system

In the process of trademark enforcement, based on the right of registered trademark, it should be decided if products accused of infringement are identical or similar to the goods on which the registered trademark is approved for use. In this article, the author, based on a case she represented, discusses the importance of proper description of goods under review and adjudication of trademarks of international registration.

A trademark right is a precondition of enforcement. In seeking a trademark registration, an applicant needs to use such wording in compliance with the official goods examination standards as to indicate properly the products on which the trademark is actually used. It is provided in Article 22 of China’s Trademark Law that “the applicant shall indicate on the application the class of goods and describe the goods on which the trademark is to be used, based on the prescribed schedule of classes of goods”. In practice, the Trademark Office of China may not accept a description of goods with broad wording, not included in the Differentiation Table of Similar Goods and Services in the application for trademark registration. However, in the application for territorial extension of international registration of marks under the Madrid system to China, general wording is acceptable. For example, “scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments” under Class 9 are accepted in the application for international registration designating China. Although the application in respect of such goods can be approved, the trademark right holder is required to spend much of its efforts on explaining the connotation and denotation of the descriptions during trademark enforcement in China, to determine the protection scope of the exclusive right to use the trademark.

In a dispute over trademark infringement, we represented a world-renowned valve producer (trademark right holder). Protection of the trademark was granted in China by international registration designating China under the Madrid system. Goods on which the trademark was approved for use fell under Class 7 “pneumatic and hydraulic apparatus and instruments for controlling and tuning, as well as parts thereof” instead of “valves”. Such description of goods was quite general. No group of similar goods was indicated in the trademark archives that the Trademark Office published. The defendant used a trademark completely identical to the registered one of the plaintiff on “valve” goods under Class 7 and owned a registered trademark on the goods falling under Class 7 “valve”. The date of application for registration of the defendant’s trademark was later than the registration date of the plaintiff’s trademark. When the plaintiff filed a lawsuit on trademark infringement, it sought invalidation of the defendant’s registered trademark.

Claire Zhao is an associate and trademark attorney at Sanyou Intellectual Property Agency