As discussed in the last article in this series, Chinese sub-classification system, in China goods and services are grouped into sub-classes. These sub-classes are important when the Chinese Trade Marks Office or the Trade Marks Review and Adjudication Board (TRAB) needs to make a decision regarding whether goods and services are similar, this could be in opposition, invalidity or cancellation proceedings or when the Office is considering raising a relative grounds objection.
The Chinese Trade Marks Office and TRAB use Official Guidelines which are followed when making decisions regarding similarity of goods and services. Our experience is that the Chinese Trade Marks Office applies these guidelines very strictly. The guidelines are still strictly applied by TRAB, but it appears to be more willing to depart from them.
The Guidelines state that as a basic rule:
- Goods or services which fall in the same subclass are similar
- Goods or services which fall in the same class, but in different sub-classes are dissimilar
- Goods or services which fall in different classes are dissimilar.
In light of these general rules, it is essential to review all of the subclasses within a particular class when drafting a specification of goods and services to ensure you have sufficient protection. The system can have surprising consequences, for example, ‘clothing’ and ‘dresses’ both fall in Class 25, subclass 01, whereas ‘wedding dresses’ fall in class 25, subclass 13. This leads to the situation where ‘dresses’ and ‘wedding dresses’, according to the basic rule, are dissimilar. From a UK/EU perspective, it would be expected that the Offices would find these goods identical since wedding dresses are a subset of dresses. Whilst it is possible to argue against the basic rule, it is difficult to succeed and costly to do so, in the long run it is better to spend time reviewing the different sub-classes at the time of drafting the specification to ensure goods that you might expect to be covered by your Chinese registration/ Chinese designation of an International registration are in fact covered.