I. What is anapplication for transformation of international registration into national application

According to Article 9 quinquies of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol)and Rule 22 of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Common Regulations), the transformation of an international registration into a national application refers to the procedure whereby, within five years of the date of the international registration, if a basic application or basic registration at the Office of origin is wholly or partially refused, expires, or is renounced, canceled or invalidated, the Office of origin shall request the International Bureau to cancel all or part of the goods and services listed in that international registration. In such circumstances, the national applicant for the international registration may file an application for domestic application of the same trademark to the competent authority of any Contracting Party where the international registration remained in force prior to its cancellation. Such application shall bear the date of the international registration or the date of any subsequent designation as its filing date. Furthermore, if the international registration enjoyed priority, the same priority may be claimed for this application.

II. Conditions to be met for transforming an international registration into a national application in China

(I) The original international registered trademark shall be valid in China.

(II) The original international registered trademark shall have been canceled in accordance with Article 6 quater of the Madrid Protocol.

(III) The application shall be filed within 3 months from the date of cancellation of the international registration.

(IV) The trademark information in the national application shall be consistent with that of the original international registration, including the registration number, the date of international registration, the date of subsequent designation, the trademark design, the name of the trademark, and the name and address of the applicant.

(V) The goods and/or services listed in the national application shall not exceed the scope of protection of the original international registration.

(VI) The goods and/or services listed in the national application shall not exceed the scope of cancellation of the original international registration.

(VII) The application shall comply with other laws and regulations concerned.

III. How to handle the application for transformation of international registration into national application in China

(I) The applicant shall submit an application to the Trademark Office through an appointed agency.

(II) Official fees shall be paid according to the standards for national trademark application.

(III)Application materials shall include the following:

1. Materials regarding the request for transforming an international registration into a national appllication, including the request for transformation, the power of attorney, and a copy of the notice on cancellation of the international registration; and

2. Materials regarding the application for trademark, which shall meet the requirements for national trademark applications.

(IV) If the original international registration covered multiple classes of goods and/or services (a single trademark registered for multiple classes), and separate national applications are filed for each class after transformation, then each national application shall be accompanied with a package of materials regarding the application for transforming the international registration into a national application.