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Trademark Department 
Linda Liu & Partners

 
According to Article 51 of China Trademark Law, the exclusive right to use a registered trademark is limited to the trademark that has been approved for registration and to the goods in respect of which the use of the trademark has been approved. We can see that the selection and description of designated goods is very important in trademark applications and can affect the trademarks’ scope of protection directly.

Therefore, there are many interesting topics; such as how to select goods accurately in the application, how to use proper descriptions to protect the goods being manufactured or distributed by the applicant in commerce, and how to seek rules to avoid unexpected risks, etc. As a reference, these topics are also valuable and meaningful to trademark applicants. This article illustrates using the following trademark application examples:

I. First Thing of Trademark Application— Classification List of Similar Goods and Services



When a natural person, legal person or other entity needs to obtain exclusive trademark rights with respect to goods or services produced, manufactured, processed, selected or distributed by them, they should file a trademark application with the Trademark Office under the State Administration of Industry and Commerce (hereafter referred to as “CTMO”). The international classifications of goods and services for trademark registration purposes contain 45 classes in total, 34 are classes of goods and 11 are classes of services. The trademark that is used on goods is named goods trademark while the trademark used on services is named service trademark.  

To file a trademark application, the applicant first needs to decide which goods and services that they would like to designate, and find the correct class for the goods or services with reference with the Classification List of Similar Goods and Services (the “List of Goods and Services”).

The List of Goods and Services contains a table of contents, titles of classes, numbered titles of subclasses, and descriptions of goods or services. Usually, we can determine the class according to tables of contents, tile of class and title of subclass. Then we may look at proper descriptions of specific goods or services under a subclass.

For example, in a trademark application filed by a cosmetics manufacturer, according to the product information from the applicant’s website and product catalog, we first selected subclasses 0301 and 0306 in class 3 as the scope of designated goods.

Then, according to relevant notice of the List of Goods and Services, the applicant should use specific descriptions of goods or services instead of using titles of class or subclass. Therefore, the tile of class 3; “bleaching preparations and other substances; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, shampoos; toothpaste”, the titles of subclass 0301 “soaps for personal laundry use and cosmetics use, bleaching preparations and other substances for personal laundry use” and 0306 “cosmetics (not include animal use)” generally cannot be directly used as designated goods. Instead, the applicant needs to designate the specific items of goods with numbers under a subclass. For example:
 

 

From the above, three points can be concluded for your attention and reference:

(1) Similarities and differences between the scope of goods in general and those defined by the List of Goods and Services: The specific descriptions of goods are from those used in daily production and life. The scopes of these two are mostly the same, for instance, shampoo, soap, cleaning milk, lipstick, etc. However, some of the descriptions of the specific goods from List of Goods and Services are superordinate concepts, for instance, make-up. The classification of subclasses does not include shampoo, soap, cleaning milk, etc. for cleaning hair and body. There are some differences from the general concept of make-up which should be paid attention to in applications.

(2) Application fee: In filing trademark applications in China, the one-trademark-one-class system is used. The official fee is CNY1,000 for filing one trademark application in one class with designated goods/services no more than 10 items. There will be an additional official fee of CNY100 for each additional item of goods/services exceeding 10. Thus, even if applicants only need to designate 5 items according to their needs, considering the future use or defense purpose, the applicants may choose to designate 10 items of goods in the application. In this way, the applicants may obtain a broader protection with same cost.

(3) Flexibility in the use of superordinate and subordinate descriptions of goods in the List of Goods and Services: As mentioned above, there are a small number of superordinate descriptions of goods in the List of Goods and Services, such as “make-up”. It is broad in scope and covers most make-up used for beauty and hairdressing in daily life. Designating such item of goods will not only protect the applicant’s goods, but also save costs. However, if it is not clear whether the subordinate goods in a subclass will be covered by the superordinate, the applicant may consider using both superordinate and subordinate goods in the application to avoid unnecessary dispute in future. For instance, it may be disputable whether “tissues impregnated with cosmetic lotion” is a subordinate item under “make-up” and under such circumstance the applicant may designate both goods simultaneously. In addition to the trademark use by applicant, the trademark may be licensed to others. In the license, if only part of the goods are to be licensed, the designation of subordinate goods is more convenient in trademark license and recordationof trademark license.

II. Basic Principles in Classification of Goods and Services

Goods or services that are not included in the List of Goods and Services should be classified according to main raw materials, function, usage, sales channels, or characteristics of services and comers, taking the List of Goods and Services as a reference. Generally, the following principles are followed:

1. Goods

(1) In principle, finished products should be classified according to their functions. If none of the titles of various classes is in relation to function or usage of the finished product, the product should be classified according to other similar finished products described in the Alphabetical List of Goods. If no similar goods are available, it may be classified according to the auxiliary standard, such as raw materials of the finished product or other means.

(2) Finished products with multiple functions (for instance a product with the function of clock and radio) can be classified using all the classes corresponding to the functions of its components. If none of the titles of various classes applies, the criteria mentioned in (1) may be applied.

(3) In principle, raw materials, unprocessed substances or semi-finished products should be classified according to their raw materials.  

(4) If the goods are part of other products and normally cannot be used for other purposes, it should be classified to the same class as the product in principle. For other circumstances, it should be classified according to the criteria mentioned in (1).

(5) When the classification of finished or unfinished products is based on raw materials, if the goods are composed of several different raw materials, the goods should be classified according to the main raw materials in principle.

(6) The containers used for containing certain goods should be classified to the same as the goods in principle.    
 
2. Services

(1) In principle, services should be classified according to the titles of service classes and the industries listed in notes therefore. If it is not listed, it should be classified according to other similar services described in the Alphabetical List of Goods.

(2) In principle, rental service is classified as the same class as the services fulfilled by the articles for rental (for instance, rental of telephone apparatus is classified to class 38). A leasing service is similar to a rental service and applies the same classification criteria. However, a finance lease is a financial service and is classified to class 36.

(3) In principle, services such as provision of advice, information or consultancy is classified in the same class as the matters involved in the service provided, for instance, transportation consultancy (class 39), business management consultancy (class 35), financial consultancy (class 36) and beauty consultancy (class 44). Provision of advice, information or consultancy by electronic means (for instance telephone and computer) does not affect the classification of such service.

(4) In principle, a licensing service is classified in the same class as the service provided by the licensor, for instance, business advice for licensing (class 35), financial service for licensing (class 36) and legal service for licensing (class 45).

3. Notice of Goods and Services

In principle, the descriptions and explanations of goods and services that are not included in the List of Goods and Services can be submitted to the Trademark Office together with application documents. However, in practice, the explanation materials would not be scanned and recorded to the electronic system of the Trademark Office. Since the examiners examine the case through the electronic system, the examiners would not notice the explanation even if the applicant submitted the materials.

Therefore, for those goods and services not included in the List of Goods and Services, the applicant may at first look at whether the goods and services can be classified using the superordinate or similar descriptions in the List of Goods and Services. If no such descriptions would apply, the applicant may try the descriptions of goods and services that are relatively standard in the industry to file the application. During the examination of the trademark application, if the examiner considers the description of the goods or service is specific and can be classified to a subclass of the List of Goods and Services, it may be accepted successfully. On the contrary, a notification of modification may be issued. Subsequently, the applicant may submit the above mentioned explanation materials or pictures to persuade the examiner to accept the description or communicate with the examiner about the modification of the description of the goods or services.

In the following, some examples will be presented:

(1) Examples where the descriptions were accepted by keeping the description of goods or services unchanged and providing explanation materials

 

All the above descriptions of goods were not standard descriptions included in the List of Goods and Services. The applicant may try and choose a class according to the principle that “finished products should be classified according to their functions in principle” in the trademark application. The examiners of the Trademark Office have issued a notification of modification and that they were not standard and required a modification in a prescribed period. Thus, we submitted the explanation materials in blue and product pictures as in above table to the Trademark Office on behalf of the applicants. Finally, we successfully persuaded the examiners, and the goods were accepted in the above classes respectively.

(Notes: Explanation materials mentioned below may be from the applicant’s product brochures, pictures, etc., or introduction, drawings or pictures of such goods from Internet or other media.)

(2) Examples of which the descriptions were accepted after communication and consultation

During trademark applications, it is true that some of the goods/services were accepted successfully by examiners using the original descriptions. However, there are more examples of those goods/services that were accepted by appropriately adjusting the descriptions through modification and explanation after in-depth communication and consultation with examiners.

For instance:




 

 

In the above examples, although “swallow wrapper” was clarified and explained in detail, it was not accepted by the examiner until it was modified to the superordinate description “wonton wrapper” as it was considered too difficult to be understood by average consumers.

“Cases and boxes for electric communication equipments and apparatus” in class 9 was not accepted by the examiner in the first place. The examiner considered the cases and boxes are containers and should be classified to different classes according to their raw materials. However, we explained to the examiner that the goods are specially used as cases and boxes for electric communication equipments and apparatus and have special function and use. According to the above mentioned basic principle (6) in goods part, containers of goods should be classified to the same class as the goods in principle. Finally, the amended description was accepted in class 9.

“Tie cases” were not accepted in class 18. After consultation with the examiner, it was modified to “cases to hold men’s ties (not fitted)” by reference to the standard description “vanity cases (not fitted)” in the List of Goods and Services and finally was accepted by the examiner.

Due to broadness of “computer numerical control processing”, it was difficult for the examiner to confirm the subclasses of this service. Thus, by limiting the subject of processing, the description was modified to subordinate descriptions under the “treatment and processing of metal materials” and was accepted by the examiner.

As for “processing of parts composed of metal and plastic”, the examiner did not understand what kind of processing this was. By submitting an explanation and drawing, this question was understood by the examiner. However, since none of the subclasses of the List of Goods and Services could fully cover this description, it was not accepted. Since “processing of metal parts” belongs to subclass 4002 and “processing of plastic parts” belong to subclass 4015, after a number of communications, we persuaded the examiner to accept this item to be protected by both subclasses 4002 and 4015. Finally, in order to differentiate it from “assembling of materials” of “general processing service, information, treatment service” in subclass 4001, a modifier of “(excluded assembling of materials)” after “processing of parts composed of metal and plastic” was added after consultation with the examiner.

From the above examples, it is easy to summarize the following rules in designating goods in a trademark application:

① If the goods can be classified to a respective class or subclass in the List of Goods and Services and the description is close to the standard description, it is easily accepted.

② In a formal examination procedure, the major task of examiners in the Trademark Office is to classify the goods or services to specific subclasses under the class for determination of similar goods in the sustentative procedure by the examiners. As for goods/services that are hard to be understood or classified to specific subclasses, the examiners will usually issue notification of modification.

Moreover, different examiners may have different understandings and determinations of the same goods. The precedent cases in which the goods were accepted can be used as reference for examiners in the determination of goods, but may not be fully adopted and accepted.

Therefore, as for newly invented products, specialty goods, professional goods or services, the relevant clarification and explanation should be submitted to help the examiners fully understand the functions, usage and characteristics. Based on such understanding, the examiners may determine an appropriate classification or adjustment proposal, considering the classification of subclasses in the List of Goods and Services and the specific contents of the goods and services.

Such proposal should meet both the work requirement of examiner and the protection to the applicant’s goods, which needs the attorney’s conciliation and communication between the applicant and examiner to seek a balance of the two parties so the trademark application can be moved forward smoothly.    

III. Other Points for Attention in Designating Goods and Services

1. The possibility of cross class of broad descriptions

In trademark application, some broad descriptions may cross a number of classes or subclasses. As for such descriptions of goods or services, they are very likely not to be accepted by the examiners. Thus, we suggest the applicant designate goods/services in the respective class or subclass according to the List of Goods and Services. Moreover, as for goods such as “○○ and parts or attachments therefore”, in addition to those standard descriptions included in the List of Goods and Services, other similar descriptions of goods are very likely to be required for medication and the applicant should try to avoid using such descriptions in China. The following are common examples listed for reference.





2. Different descriptions of the same goods
 

 

During the trademark application, the same goods may be classified to different classes due to different descriptions.

 

For example, “Aluminium foil for food packaging” is also named “silver paper”. Through searching, we found that the two descriptions actually refer to one product with almost the same function and use. However, according to the List of Goods and Services, they are classified to different classes as shown above and do not constitute similar goods.

In addition, “foam supports for flower arrangements (semi-finished products)” is commonly known as “mud flower arrangement”. “Foam supports for flower arrangements (semi-finished products)” is classified to class 17 according to its raw materials while “mud flower arrangement” is similar to “holders for flowers and plants (flower arranging)” in class 21 in use and is classified to subclass 2106. And according to the List of Goods and Services, they do not constitute similar goods.

Then a problem arises. If the applicant only files a trademark application in one class and another party files the application in the other class, the coexistence of the trademark of the two parties in different classes will cause a serious dispute in enforcement of rights. Therefore, for such goods, the applicant should file trademark applications in all the relevant classes simultaneously to avoid unnecessary risk and dispute. 

3. Points for attention of difference in goods/services between China and Japan

There are a small number of goods that belong to different classes in China and Japan. The applicant should pay attention to this point and make appropriate adjustments. For example:
 

 

There are also some goods/services that are used in Japan and should be adjusted when filing applications in China. For example, “” is specially defined in terms of scope, but its meaning is not clear when it translated into Chinese. Such a description is very likely to be required for medication in trademark application in China. Even if it is accepted accidentally, barriers to enforcement may result since the meaning is not clear. Therefore, we suggest using the following amendments by designating specific descriptions of goods. 

In addition, Japan adopts a retail service system. However, it has not yet been adopted in the trademark system in China. Thus, a retail service cannot be accepted in China. In China, if the applicants want to obtain a right in this respect, they need to designate the specific goods and services in class 35 to seek combined protection.  



One point worth mentioning is that from January 1, 2013, the List of Goods and Services will adopt “retail services or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies” by reference of the amended 10^th version of Nice Classification, which means the China Trademark Office is likely to use the above service item to try and gradually adopt retail services into trademark system.
 

 

To sum up, the above is intended to introduce descriptions of designated goods/services and relevant points for attention in trademark applications in China. The above-mentioned descriptions of goods and basic principles and practice of classification remain relatively strong in consistency and stability. However, in some specific cases, the descriptions may vary with the change of practice in trademark application. Therefore, as for specific cases, according to new developments and changes, it may necessary to adjust the descriptions of goods/services from a dynamic perspective. If there are any questions or difficulties that arise in relation to classification of goods/services in trademark applications in China, it is advisable to seek advice from Chinese trademark experts. I hope this article provides some references to the applicants in trademark application.    
 
References:
1. China Trademark Law
2. List of Goods and Services
3. Introduction of Classification of Goods and Services for Trademark Registration Purpose http://sbj.saic.gov.cn/sbsq/spfl/

（2013）