The Madrid System, administered by the World Intellectual Property Organization (WIPO), offers a convenient and cost-effective route for trademark registrants to seek protection in most countries or regions. However, while the system simplifies the registration, it also leads to certain risks — most notably the "central attack". This article interprets the legal basis, conditions, and procedures for transforming an international registration into a national application after the mark encounters the "central attack", and provides practical suggestions for registrants to mitigate the risk of central attack.

Legal Basis and Basic Rules

An international registration under the Madrid System must be filed through the trademark office of the registrant’s home country and based on a home application or home registration (the "basic mark"). The international mark must be identical to the basic mark, and the list of goods and services may not exceed the scope of the basic mark.

Under Article 9 of the Madrid Protocol, if within the first five years from the date of international registration, the basic mark is finally rejected, expired, abandoned, cancelled, or invalidated, the Office of origin must notify the WIPO, which will then cancel the international registration accordingly.

In such circumstances, the registrant of the international registration may file an application for the same mark with any contracting party where the international registration was still valid prior to its cancellation. Such national application shall enjoy international registration date (or the date of subsequent designation) as the filing date and enjoy the same priority right if applicable.

Conditions for Transforming an International Registration into a Chinese National Application

To transform an international registration into a Chinese national trademark application, the following conditions must be met:

A. The international mark must have been valid in China at the time of cancellation of the basic mark.

B. The basic mark in the country of origin has been invalidated / canceled.

C. The transforming application must be filed within three months from the date the international mark was cancelled.

D. The trademark information in the transforming application must be identical to that of the international mark, including the international registration date, trademark sample, name and address of the registrant, etc..

How to File a Transforming Application in China

A. Filing Route: The registrant must file it before the CNIPA.

B.  Required Documents:

Ø  Application documents for transformation: a specific application form for transformation, a power of attorney, and a copy of the international cancellation notice;

Ø  Standard national trademark application documents (as required for domestic filings).

Ø  If the original international mark was filed as a multiple-class application, and the transforming application need to be filed as a single-class application.

How to Reduce the Risk of Central Attack for an International Mark

Registrants can take the following measures to reduce the risk of central attack during the critical five-year dependency period:

A.     Carefully Assess Basic Mark Risks Before Filing

Ø  Before filing an international application, the registrant needs to evaluate the risks associated with the basic mark.  If the basic marks that are already subject to opposition, invalidation, or non-use cancellation actions at the time of filing, these marks are particularly high-risk.

Ø  Consider filing the national applications for the core marks to reduce the risk of central attack.

Ø  Actively defend the basic mark when challenged (e.g., in opposition, invalidation, or non-use cancellation proceedings).

B.     Respond Proactively When the Basic Mark Is Under Attack

If the basic mark is rejected, opposed, or subject to invalidation or cancellation, registrants should actively respond.

The writer hope above information is sufficient for you to deal with the "central attack" and filing the transforming marks in China.