Madrid Designations of China: Handling a Provisional Refusal From CNIPA

Many foreign brands reach China through the Madrid System: one international application, China ticked as a designated country. Months later, WIPO forwards a provisional refusal from the China National Intellectual Property Administration (CNIPA). The refusal affects only China; your other designations are untouched. But if you do not respond in time, the refusal becomes final and you have no protection in China. This guide explains why CNIPA refuses Madrid designations, what the response involves and how to keep the parts that can be saved. It sets out general rules; a specific case needs professional advice.

Why China refuses Madrid designations

• Earlier similar marks: the most common ground. CNIPA compares goods using China's own similar goods guide, which divides each Nice class into subclasses. Goods you consider unrelated may be treated as similar, and goods in the same class may not be. See Nice Classes Explained.
• Lack of distinctiveness: descriptive words, common shapes or slogans may be refused, especially in Chinese translation.
• Partial refusals: a refusal often covers only some goods. The rest go ahead.

China examines Madrid designations within the 18-month period under the Madrid Protocol. If no refusal is notified in that period, protection is granted.

Responding: a Chinese agency and a short deadline

• You need a Chinese trademark agency: foreign holders without a business or habitual residence in China must act through a CNIPA-recorded agency to request review.
• The deadline is short: a review of an ex officio refusal must be requested within 15 days from the date you receive the refusal notification from WIPO (30 days if the refusal is based on an opposition), according to the time limits China has notified to WIPO. Because the notice may reach you through your home representative, days are often lost before you see it. Ask your representative to forward Chinese refusals the day they arrive.
• Review takes time: a review before CNIPA's Trademark Review and Adjudication Department currently takes about 6 to 9 months. The general options are the same as for a national application; see What to Do When Your China Trademark Application Is Refused.

Ways to save the designation

1. Argue the review: show that the marks or goods are not similar, or that your mark has acquired distinctiveness through use in China.
2. Remove the cited mark: if the earlier mark has not been used for three consecutive years, file a non-use cancellation while the review is pending, so the obstacle may disappear before the decision. See Trademark Squatting in China: Opposition, Invalidation and Non-Use Cancellation.
3. Consent or assignment: a letter of consent from the owner of the cited mark can be filed in the review; CNIPA accepts it case by case.
4. Accept the partial refusal: if only peripheral goods are refused, let them go and keep the accepted goods.
5. File directly in China: if the Madrid specification does not fit Chinese practice, a national filing drafted with standard Chinese terms and the right subclasses may succeed where the designation did not.

Issues specific to Madrid designations

• Dependency on the home mark: for five years the international registration depends on your home application or registration. If the home mark falls, the China designation falls too. A refusal in China has no effect on the home mark. See Madrid Designation or Direct National Filing.
• No Chinese-character mark: a designation protects the mark as filed. A Chinese name needs its own filing in China.
• Proof of protection: some Chinese platforms and customs procedures ask for evidence of protection in China. Keep CNIPA's statement or certificate for the designation, and check the status in WIPO's Madrid Monitor.

Frequently asked questions

We missed the 15-day deadline. What now? The refusal becomes final for the refused goods in China. The usual route is a new national filing, after checking that the cited mark is still a problem.

Can we limit the goods instead of requesting review? Yes. A limitation can be recorded through WIPO, but it does not overcome a refusal by itself unless the refused goods are the ones removed. Discuss with your Chinese agency before filing it.

Does the refusal affect our other countries? No. Each designated office examines independently.

J&C Intellectual Property Agency, founded in 2008, is a CNIPA-recorded trademark agency and a member of the China Trademark Association. We handle trademark filings and customs recordals in China for foreign brands; see our trademark registration service.