Trademark protection is not all-encompassing; it must
be attached to specific goods or services (Nice Classification). Precise
"land-marking" is the key to determining the value and stability of a
trademark.
1. The "Dependency"
Constraint in International Applications This is a major limitation of
the Madrid System: the scope of goods in an international application must
not exceed the scope of the basic application (home country filing).
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The Shrinking Dilemma: If your basic case in
China only covers "Cosmetics," your international application
cannot include "Beauty Salon Services."
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National Flexibility: Individual filings have
no such constraint. You can flexibly apply for "Software" in the
U.S. and "Consulting" in Germany, with each scope independent of
the others.
2. "Localization" of
Product Descriptions While most countries follow the Nice Classification, specific requirements for
terminology vary significantly.
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USA (USPTO): Requirements are
extremely precise and detailed. Generic terms commonly used in
international applications (e.g., "Computer Programs") will
almost certainly trigger an Office Action in the U.S.
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China (CNIPA): Uses a unique
"Sub-class" system. If your international application includes
items that don't match the Chinese standard terminology, examiners may
misclassify them, creating gaps in your protection.
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National Advantage: Local attorneys draft
items based on the "Pre-approved Lists" of their respective
offices, minimizing refusal risks and maximizing protection scope.
3. Balancing
"Standard" vs. "Non-Standard" Items
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International Route: To satisfy multiple
countries, applicants tend to use standardized WIPO terminology. While
convenient, it may not fully cover a brand’s most competitive niche
products.
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National Route: Allows attorneys to
argue for "non-standard but commercially valuable" descriptions
based on local practice, achieving "tailor-made" protection.
Summary Advice If your products are
standardized and straightforward (e.g., clothing), the Madrid System is
sufficient. However, if your business is diverse and complex (e.g., a tech firm
combining hardware, software, and data services), we recommend National
Applications for core markets to ensure precise "land-marking"
and avoid restricted rights due to improper descriptions.