When searching trademark in China, it is not easy to judge whether the goods/services are similar or not, for example are the goods/services under the same subclass all similar to each other? If the mark application is rejected by the Trademark Office due to existence of prior mark on similar goods/services, is it possible to overcome the rejection by arguing the dissimilarity of goods/services in the review procedure?
“Similar Group” is group of similar goods and services in the Classification of Similar Goods and Services (hereafter referred to as Classification) in China. The Classification is finalized by Chinese Trademark Office (CTMO) based on Nice Classification, to group goods/services that are closely related or easily confused.
According to the Classification, goods or services in the same group are in principle presumed to be similar to each other. If goods or services in the same group are not wholly similar, there will be subgroups. Goods or services in the same subgroup in principle are presumed to be similar to each other. Goods or services in different subgroups are in principle presumed to be dissimilar to each other. But there are still some special cases, like goods in the same subgroup are not similar or goods in different subgroups are similar to each other. All these special cases are indicated in the remarks columns. Here is an example for reference.
So, with respect to the first question, goods in the same similar group are not definitely similar to each other. Accurate judgment shall be made according to the Classification and its remarks columns.
If there is prior trademark application/registration on similar goods/services, the later filed application will be rejected by the CTMO. In the review procedure, the Trademark Review and Adjudication Board (TRAB) will also use the Classification and normally will not change the judgment on similarity of goods/services. So 2 / 2 generally the chance of success in review procedure based on argument of dissimilarity of goods/services is very low.
Nevertheless, the TRAB might change the judgment on goods/services for special cases where 1) the trademark has very high creativeness; 2) the mark has obtained high reputation through use; 3) actual circumstances of business and economies has changed and the old standards on some goods/services are not proper any more. This kind of change is only for individual case and made very cautiously. If the applied mark meets the above conditions, it is considerable to overcome the rejection by arguing the goods/services are actually not similar to each other.