On July 10, 2025, another session of the intellectual property consultation point for exporters concluded.
A representative of a Belarusian passenger and freight carrier, holding an international trademark designating a number of countries, including China, informed the consultant that the Chinese Patent Office had refused registration of this mark due to its similarity to an earlier registration of another trademark belonging to a Chinese transportation service provider. Prior to contacting the BelCCI's (Belarusian Chamber of Commerce and Industry) consultation point, the Belarusian applicant had, during consultations with Chinese patent attorneys, learned that to overcome the refusal, it would be necessary to submit to the China National Intellectual Property Administration (CNIPA) information on the use of the trademark within China, its advertising, the volume of goods supplied, or the volume of freight transported. Unfortunately, the Belarusian carrier did not possess such information at the time of the refusal, as it had not yet provided its services in China.
Following the commencement of transportation services to China, the Belarusian holder of the international trademark decided to contact the consultation point with a question regarding the possibility of obtaining legal protection for the trademark in China.
The consultant's response was based on the provisions of the Madrid Agreement Concerning the International Registration of Marks, the Protocol Relating to the Madrid Agreement, as well as Chinese trademark law.
"In accordance with the aforementioned legal acts, as well as CNIPA's enforcement practice, in the event of a final refusal to register a trademark, the applicant has the right to file a new application for the same trademark (service mark) in relation to similar goods (services)."
"Applied to an international trademark, such a procedure is the territorial extension of an already existing registration. This means that the existing international registration of the trademark can be territorially extended to China, where the trademark has already been refused. After the territorial extension, CNIPA may again oppose the earlier cited similar registration of the senior Chinese trademark. However, considering the established use of the Belarusian applicant's trademark in China, overcoming the refusal will become easier, since the applicant will be able to provide evidence of a connection in the consumer's mind between the used mark and its applicant. A strong association of the trademark with the name of its manufacturer among consumers will allow avoiding confusion between the applied-for and the opposed designations, since such similarity between them can then be interpreted as a similarity to a lesser extent."
