The China Trademark Office (“CTMO”) will, from 1 January 2013, accept trademark applications for retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies. The CTMO has never before accepted trademark applications filed in terms of “retail or wholesale services” in any kind.
The tenth edition of the “Nice Classification”, which takes effect as of 1 January 2013, adds, among other things, “retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies” (hereinafter the “Newly-added Services”) in Class 35. The CTMO, in response to these changes, announces to add those Newly-added Services indications as a separate group of services under Class 35 of the “Classification of Similar Goods and Services for Registration of Marks in the People’s Republic of China” and to begin to accept trademark registration applications for the Newly-added Services from 1 January 2013.
1. Definition of Newly-added Services
The Newly-added Services are defined by the CTMO as “the retail (wholesale) services of bringing together, for the benefit of others, of a variety of goods (excluding the transport itself), enabling customers to conveniently view and purchase those goods provided by retailers (wholesalers)”. Such services are a combination of services provided for the purpose of encouraging customers to purchase the said goods, including services of providing goods, displaying goods, providing trial services, providing shopping guide, providing goods information, and providing shopping carts or baskets, etc. The Newly-added Services may be provided in either conventional bricks-and-mortar stores or through the Internet, postal systems, TV sales systems or vending machines.
The newly-added service indications protect the retail or wholesale services of those products instead of the products themselves. Manufacturers of pharmaceutical preparations or other above-mentioned specific products shall apply for registration of trademarks for those products they sold. Where the manufacturer wishing to protect their retail or wholesale services, which are distinguishable from those provided by others, such manufacturers may apply for registration of trademarks for the Newly-added Services.
2. Formal Examination of Trademark Applications for Newly-added Services
When applying for the trademark registration of the Newly-added Services, applicants may designate either of the service indications in their application.
- “retail (wholesale) services for pharmaceutical, veterinary and sanitary preparations and medical supplies”,
- “retail (wholesale) services for pharmaceutical preparations”,
- “retail (wholesale) services for veterinary preparations”,
- “retail (wholesale) services for sanitary preparations” or
- “retail (wholesale) services for medical supplies”.
3. Substantive Examination of Trademark Applications for Newly-added Services
Many experts express their opinions on whether the indications of the Newly-added
Services are similar to one another or are similar to relevant service indications such as “sales promotion for others” under Class 35. It is our opinion that the indications of the Newly-added Services are similar to one another in terms of their service purposes, contents, modes and objects. In relation to existing goods and services indications, the Newly-added Services are not similar either to the actual products sold by the retailer or wholesaler, or to the existing services in Class 35, such as “sales promotion (for others)”.
4. Exceptional Provisions during the Transitional Period
In order to protect the interests of the right holders who have already used their service marks and to relieve the office’s overburden of accepting numerous trademark applications filed on the same day, the CTMO set a transitional period (January 1-31, 2013) based on its experience in accepting service mark applications, that:
- all applications for registration of trademarks in terms of the Newly-added Services indications filed during the transitional period shall be deemed to have been filed on the same day.
- all applications for registration of trademarks in terms of the Newly-added Services indications filed during the transitional period shall be supported by the production of a business license proving that the services the applicant applied for are in comply with the business scope approved in its business license.
Moreover, where applications for the registration of identical or similar trademarks are filed on the same day, the party which has prior use of the trademark in relation to the services applied for will enjoy the prior right in obtaining the CTMO's approval of the application.
As the division of labour becomes gradually specialized, the inclusion of retail and wholesale services into the scope of trademark protection meets the needs of enterprises engaging in retail or wholesale. In practice, due to the rejection of registration applications for retail or wholesale services, many enterprises registered trademarks for their retail or wholesale services under the class for services such as sales promotion for others, marketing, displaying products in communication media for retail purposes, and some retail enterprises' trademarks registered under the class for services of sales promotion for others even obtained the official recognition of well-known trademark status, which caused disputes and confusion about the contents and scopes of protection of the services concerned.
It is a ground-breaking move for the CTMO to confirm that the retail or wholesale services are within the scope of protection of the trademark registration by accepting trademark applications for the Newly-added Services, meeting the needs of retail or wholesale enterprises in the pharmaceutical industry. Meanwhile, we believe that, with the accumulation of experience, the CTMO may accept trademark applications for retail or wholesale services from other industries in due time.
In addition, the move helps to untangle the relationship between retail or wholesale services and existing services of sales promotion for others, marketing or displaying products in communication media for retail purposes, which helps to sort out the confusion that existed previously.