As of 1 January 2013, changes to the 10th Edition of The Nice Classification ("NCL") will come into effect. The World Intellectual Property Organization will add a service item entitled "Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies" ("New Services") in Class 35. This means that, in accordance with the formal announcement, the China Trademark Office ("CTMO") will be able to accept trademark filings in the New Services beginning 1 January 2013.
The CTMO has never before accepted the term "retail and wholesale related services" in trademark applications. These new changes were announced on 14 December 2012 and, as a part of China's commitment to adhere to international IPR treaties, the CTMO has announced it will put them into practice beginning 1 January 2013.
1. NEW SERVICES
Scope of Protection of the New Services
At this stage, the New Services will offer trademark protection for retail and wholesale services for pharmaceutical, veterinary and sanitary preparations and medical products ("Serviced Goods") only. The New Services are aimed at increasing the number of service providers and encouraging customers to purchase the Goods from platforms such as traditional and online stores.
Permitted descriptions of the New Services
New trademark applications can include the below services. These provide the option of either covering all acceptable Serviced Goods (e.g., as in Item 1) or selecting specific Serviced Goods (e.g., as in Items 2-7).
- Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies;
- Retail or wholesale services for drugs for human use;
- Retail or wholesale services for pharmaceutical preparations;
- Retail or wholesale services for medical products.
- Retail or wholesale services for sanitary preparations;
- Retail or wholesale services for veterinary drugs;
- Retail or wholesale services for veterinary preparations.
Items 2-5 are related to human use, and Items 6-7 veterinary and animal usage.
Prohibited descriptions of the New Services
The following items do not fall under the scope of New Services, and will not be accepted by CTMO at this time:
- Retail and wholesale services;
- Retail and wholesale of drugs;
- Retail and wholesale of certain drugs;
- Retail and wholesale of certain brands of drugs;
- Providing information for retail and wholesale of drugs;
- Providing consulting services to customers during drug retailing;
- Retail and wholesale services for compound preparations provided by medical institutions;
- Other non-standard items.
2. THE CTMO'S TRADEMARK EXAMINATION
Separate from the NCL, China also has its own subclassification system of trademarks; goods/services in the NCL classes are further divided into sub-classes, which are generally considered dissimilar from each other for the purposes of trademark registration.
The CTMO has not previously accepted trademark applications in "retail and wholesale services". In practice, retailers and wholesalers in pursuit of protection for their services have instead designated alternative service items such as "promotion for others", "business information", "presentation of goods on communication media, for retail purposes", etc. ("Substitute Services").
Similarity between New Services and existing services and goods
According to the CTMO, the New Services will be classified into the new subclass 3509, in Class 35. Existing goods coverage within Class 5 (i.e., pharmaceutical and veterinary preparations; sanitary preparations for medical purposes for distribution) will not be considered similar to the New Services, and the CTMO will not conduct cross-class examinations between Classes 35 and 5.
The New Services are also not regarded as similar to the Substitute Services (e.g. "promotions (for others)" and other services in Class 35.
Similarity among New Services
Among the New Services, the general item "retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies" is regarded as similar to the other six detailed items of services. In practice, this means that a prior trademark registration covering the general item could block later applications covering any of the other six.
The human and veterinary related items are separated into two distinct groups. The four items related to human use are considered similar to each other, while the veterinary items are similar to each other as well. Human and veterinary services are, however, not regarded as similar, and prior registration for retail and wholesale for veterinary related goods will not be able to automatically block a later similar application covering retail and wholesale of one of the human use items, and vice versa.
3. INTERIM RULES
Similar to when service marks were first introduced in 1993, an interim period is allowed, which runs from 1 January 2013 to 31 January 2013. All trademark applications covering the New Services, filed within this period, will be deemed as filed on the same date.
Where identical or similar marks are filed during the interim period, the applicants should provide proof showing first-use. The application with prior use will be preliminarily approved. Where the applicants used the mark starting from the same day, or none of them have used it, they shall resolve the matter through consultation. Where the applicants fail to reach an agreement, a lottery draw will be arranged (in accordance with Article 19 of the Implementing Regulations to the PRC Trademark Law) in order to determine which application will be accepted.
During the interim period, the CTMO will not accept online e-filings for the New Services. It should also be noted that the filings covering New Services should be within the business scope approved in the applying company's Business License.
4. IMPACT ON BUSINESS
The acceptance of applications in the New Services is ground breaking and will facilitate better protection of retail and wholesale services in the relevant industries. We expect that in future, the CTMO will accept applications in retail and wholesale services in additional industries, outside of the scope of pharmaceutical, veterinary and sanitary preparations and medical supplies.
The CTMO has made it clear that the New Services are generally dissimilar to the Substitute Services, and applicants involved in retail and wholesale of pharmaceutical, veterinary and sanitary preparations and medical supplies should consider filing new trademark applications designating the New Services.
Applicants involved in retail and wholesale services that fall outside of the scope of the Goods should continue to register their trademarks in the Substitute Services.