Issues on classification of goods and services when registering Chinese trademarks

1. Trademark registration paths in China 

Similar to most other countries, an organization or individual can register a trademark in China through two common routes: 

  • Register an international trademark through the Madrid system from any country that is a member of the Madrid system and, subsequently, designate protection in China.
  • Register a national trademark directly in China through an intellectual property agent in China. 

China’s intellectual property law on trademark registration applies the first-to-file principle. That is, regardless of who used the mark first (with some rare exceptions), only the person who first applied for registration is recognized as the trademark owner.

2. Why should you register a trademark directly?

The time to complete trademark registration in China through WIPO international trademark registration is from 9-18 months. Meanwhile, if you apply through the direct registration of a national trademark in China, the time to complete the registration process (if the trademark meets the protection conditions) is only 6 – 9 months from the date of application. 

In addition, the applicant also needs to note that China applies its own Classification of Goods and Services, so if classified according to the Nice International Classification of Goods and Services, the application may be rejected because of inappropriate classification of goods and services. This reason for refusal is especially common with classes of goods and services related to retail services (Group 35 according to the Nice International Classification).

3. China’s national classification

The China National Intellectual Property Administration (CNIPA) has devised a distinctive sub-classification system. Under this system, items falling within each Nice class are categorized into sub-classes, with certain sub-classes further divided into distinct groups. These sub-classes are detailed in a domestic standard classification guide along with corresponding descriptions of goods and services in Chinese, known as the “Chinese Classification Manual”. 

Sub-classification systems are quite prevalent in Asia, aimed at promoting more consistent examination outcomes. For instance, the Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and Taiwan Intellectual Property Office (TIPO) employ “Similar Group Codes” that align with the Nice Classification.

4. Notes on Service Trademark in Class 35

Class 35 primarily encompasses services related to business management, organization, and administration of commercial or industrial ventures, as well as advertising, marketing, and promotional activities. In China, Class 35 is commonly referred to as the “all-purpose class.” Many companies have opted to register their trademarks in Class 35 to comply with requirements from online e-commerce platforms, physical shopping malls, or for defensive purposes. 

Last December, the China National Intellectual Property Administration (CNIPA) released new guidelines on the application and usage of service trademarks in Class 35. These guidelines provide further clarification on how to interpret and utilize service marks in Class 35 from an official standpoint. The guidelines underscore that services in Class 35 are intended for others, rather than for the trademark holder’s business needs.  

Consequently, selling goods under the trademark owner’s brand does not fall under Class 35. Similarly, the scope of “advertisement” in Class 35 is limited to advertising services provided to others, excluding self-promotional activities.

5. The language of the designation

The designation language must accurately depict the goods or services and effectively differentiate them from those in other categories. It’s essential to avoid ambiguous or overly broad terms that could lead to confusion or misinterpretation. 

For instance, the term “e-commerce services” lacks clarity as it encompasses various business activities conducted through information network technology, spanning multiple industries or service types.  

During trademark registration, applicants may employ descriptive terms that elaborate on various aspects of the goods or services, such as their function, materials, distribution channels, or target consumers. These descriptive terms aid in determining the appropriate class for trademark application. 

6. Common problems relating to classification in China

(i) Improper categorization of an IR by the CNIPA 

When International Registrations (IRs) are extended to China, CNIPA examiners translate their specifications into Chinese and assign sub-classes for the designated goods and services without consulting the trademark owners. This unilateral decision-making by the examiners can lead to various issues, such as sub-class selection that may not adequately cover essential aspects or inaccurate translation of descriptions intended by the brand owners. Given that goods and services categorized under different subclasses are generally considered dissimilar in China (unless specified otherwise in the Chinese Classification Manual), the incorrect classification of specifications can adversely affect the protection of an IR in China. 

(ii) Gaps in sub-classification of an IR in China  

The specifications of an International Registration (IR) typically do not align with China’s sub-class system. For instance, the general description of “clothing; footwear; headgear” under Class 25 might lead trademark owners to believe it covers a wide range of clothing items. However, in China, this description may not encompass items like socks, gloves, ties, scarves, belts, sashes for wear, shower caps, sleep masks, hairdressing capes, and wedding dresses, which are typically considered clothing elsewhere. Since these goods fall under other sub-classes of Class 25, they are treated as dissimilar to “clothing.”  

The inadequacy of sub-class coverage in China could allow trademark infringers to exploit gaps by registering identical or very similar trademarks in sub-classes not covered by a brand owner’s application or registration in China. This could undermine trademark owners’ enforcement rights in China. 

 

Disclaimers:

This article is for general information purposes only and is not intended to provide any legal advice for any particular case. The legal provisions referenced in the content are in effect at the time of publication but may have expired at the time you read the content. We therefore advise that you always consult a professional consultant before applying any content.

For issues related to the content or intellectual property rights of the article, please email cs@apolatlegal.vn.

Apolat Legal is a law firm in Vietnam with experience and capacity to provide consulting services related to Intellectual Property Rights and contact our team of lawyers in Vietnam via email info@apolatlegal.com.

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