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How to Build Brand Protection for “Neither Fish nor Fowl” Products? — A Brief Analysis of Trademark Portfolio Strategies for Multifunctional New Products
Min CAO
Chinese trademark attorney
Currently, technological innovation has become the winning formula for industries worldwide to stand out. It is akin to an inexhaustible treasure trove of energy, enabling products to transcend single functionalities. Through continuous integration and optimization, it fosters the creation of multifunctional products that cater to the ever-growing and diverse needs of consumers, while also consistently infusing various fields with vigorous momentum.
From smartphones equipped with high-definition photography, intelligent beauty filters, and superior anti-shake capabilities, to products that feature a shared water system between dehumidifiers and steam irons, and further to tablet computers that seamlessly switch between various modes such as learning, entertainment, and office work, these innovations cater to the diverse usage scenarios demanded by people.
These multifunctional new products inevitably bring to mind the Père David’s deer (Elaphurus davidianus) in the animal kingdom, which is often referred to as “neither fish nor fowl”1 due to its unique combination of features: a narrow, elongated face and head resembling a horse, antlers similar to but slightly distinct from those of other deer, broad hooves akin to an ox, and a slender tail like that of a donkey. In this context, we shall tentatively dub these innovative hybrid products that amalgamate characteristics of various items as “neither fish nor fowl” product.
The author will analyze and discuss the strategy to establish trademark portfolio for multifunctional new products and the issue of responding to non-use cancellation after registration, in combination with the specific cases from trademark examination and adjudication practice, hoping to be of some references.
I. Comprehensive Brand Portfolio Establishment for “Neither Fish nor Fowl” Product
With the emergence and promotion of “neither fish nor fowl” product, their brand protection has become an urgent issue to address. These products, which integrate multiple functions and features, differ from traditional products and often do not fit neatly into a single class, a single similar group, or a single product name according to the current Classification Table of Similar Goods and Services.
According to the principles of the Nice Classification, multifunctional composite products should be classified based on their primary function or intended use. For instance, “electronic sound-emitting device with a book” should be applied for in class 9 since it primarily functions as an electronic sound-emitting device. Conversely, “book with an electronic sound-emitting device” should be applied for in class 16 since it primarily serves as a book. When it is difficult to clearly determine which function is dominant, the most prudent approach is to apply for both Class 9 and Class 16, aiming to secure registration in both classes.
Therefore, until the product descriptions corresponding to “neither fish nor fowl” product are included in the Classification Table of Similar Goods and Services, the optimal solution that comes to mind is to submit registration applications by designating multiple relevant classes, groups, and product descriptions to achieve more comprehensive protection.
In practice, this brand strategy has been widely adopted. Some examples include:
[Table 1: Trademark portfolio for “neither fish nor fowl” product in practice]
In the table above, the washer-dryer combination in Example 1 is a multifunctional product that has been on the market for many years. However, it was not until the 2022 revision of the Classification Table of Similar Goods and Services that “washing machines with drying drums, 070588” was added to Group 0724 of Class 72. Now, this product can be designated for protection. Nevertheless, the all-in-one washer-dryer, which has gained popularity in recent years, differs slightly from this product. Relying solely on designating this product may not provide adequate protection.
The remaining products, such as the shawl-style electric blanket and the suitcase that doubles as a folding chair, both of which combine multiple functions, have seen their owners unanimously opt to designate goods across multiple classes and similar groups when applying for trademark registration.
Another example is the currently popular “Smart Screen” product, which boasts multiple functions including audio-visual entertainment and even video calls. The trademark protection for such products faces similar challenges. Although China currently accepts the non-standard goods “TV-computer integrated machines (similar group: 0901/0908)” in trademark application, it still does not cover all the primary functions of “Smart Screen” product. Therefore, it is necessary to file registration applications in multiple classes.
From this perspective, to achieve comprehensive protection and more effectively mitigate the risk of future infringement for “neither fish nor fowl” product, enterprises should ideally base their trademark strategy on the functional uses of the products, and consider their form, materials, and other factors to apply for registration in multiple classes and similar groups.
II. What could the registrant do when facing the non-use cancellation against their “neither fish nor fowl” product?
With the rapid increase in trademark applications in China, parties are increasingly opting to file non-use cancellation requests against prior trademarks to clear obstacles. According to statistics from the China National Intellectual Property Administration (CNIPA), the number of non-use cancellation review requests reached 20,393 in 2023, marking an increase of approximately 34%3 compared to 2022.
In this context, while “neither fish nor fowl” products are securing comprehensive trademark protection, they also face an awkward dilemma: when facing a non-use cancellation, they must provide use evidence of a single product to maintain their trademark registrations in multiple classes. This situation may lead trademark owners to question whether their product truly belongs to so many classes. Can the use evidence of the same product be recognized in multiple non-use cancellation cases? When preparing their defense, they might easily find themselves in a predicament of choosing between one or the other.
The Guidelines for the Trial of Administrative Cases Concerning Granting and Affirmation of Trademarks issued by the Beijing High Court in April 2019, under section 19.7, stipulate that: “When the actually used product or the approved product does not fall under the standard product names in the Classification Table of Similar Goods and Services, the determination of the specific product’s class should be made comprehensively based on the product’s function, purpose, production sector, distribution channels, and consumer base, combining with influence to the product’s nature or name from consumer habits, production models, industry operational needs, and other market factors.”
Upon conducting a search, the author has found that in practice, when a product possesses multiple functions, it is quite common for the use evidence of a single product to maintain the validity of trademarks across multiple similar groups and even multiple classes. Some case information is presented in the table below:
[Table 2: Summary of the Cancellation Review Decision relating to “neither fish nor fowl” product]
In addition, there is a situation where the trademark use evidence of the same type of product is recognized as the use of the goods in different classes requested for review in the trademark non-use cancellation review cases. Here, we will have “tablet candy” as an example. As shown in Table 3, all these three trademarks are “美敦力加MEYDUNLG “ registered by the same company. In the three trademark non-use cancellation review cases, “tablet candy” was determined to belong to Class 5 as “baby food”, Class 29 “milk products” and Class 30 “candy” according to different judgment bases, the details are as follows:
[Table 3: cases concerning use evidence on “candy tablets” being recognized in different classes]
Based on the cases presented in Tables 2 and 3, it is evident that in practice, the CNIPA does not mechanically restrict the examination of use evidence for multifunctional and composite products to the similarity relationships and descriptions of approved goods in the Classification Table. Instead, it comprehensively determines the nature of the products and the scope of registration maintenance based on the product's functional use, materials, target consumers, and other characteristics in individual cases. This approach aligns with the guidelines set forth by the Beijing High Court.
Returning to the legislative purpose of the three-year non-use cancellation system, its aims to encourage and urge trademark registrants to use their trademarks, thereby enabling the trademarks to fulfill their role of distinguishing the source of goods or services in the market.
This system is neither a penalty for the non-use by trademark registrants nor an obligation imposed on them to use their trademarks. It is merely a measure6 to return the trademark to the public domain when the registrant has not used it for three consecutive years, rendering the trademark inactive. This facilitates the registration by others and revitalizes trademark resources.
Therefore, when a “neither fish nor fowl product” faces a non-use cancellation application by a third party, it is advisable for the registrant to actively submit use evidence in defense. Depending on the specifics of the case, the registrant should emphasize the relationship between the actual used goods and the goods subject to cancellation from various perspectives to strive for the maintenance of the registration.
III. Summary
In military strategy, it is said that “Provision comes first before the troops move.” The brand strategy for “neither fish nor fowl product” requires a forward-looking and comprehensive strategic vision. When planning trademark registrations, it is neither advisable to limit the selection of goods or services to traditionally defined fields for the sake of convenience, nor to blindly expand applications without thorough consideration. It is essential to base the strategy on the product's functions, uses, forms, production modes, and target consumer groups, and to make a comprehensive judgment on the product’s essential attributes before proceeding with a reasonable and comprehensive trademark registration plan. When facing multiple non-use cancellation requests for trademarks related to the same product, the trademark owner can logically and justifiably explain why the product falls under multiple classes and request that the use evidence of a single product be recognized as valid across multiple classes or groups. This approach ensures that “registrations are well-founded and enforcement is resolute.”
1Introduction to “Père David's deer (Elaphurus davidianus)” in Baidu Encyclopaedia https://baike.baidu.com/item/%E9%BA%8B%E9%B9%BF/336884 2Chinese version of NCL(11-2022) and modifications in Classification Table 3The 2023 Annual Report of CNIPA (Page: 39) https://www.cnipa.gov.cn/module/download/down.jsp?i_ID=194458&colID=3430 4Cancellation Review Decision of CNIPA Adjudication No. [2024] 0000274851 5Cancellation Review Decision of CNIPA Adjudication No. [2024] 0000292967 6Exploration and Determination of the Effective Use of Trademarks in the Form of “Gifts” in Trademark Cancellation Cases—Cancellation Review Case of Trademark No. 18754103 “Classic Mercury”
Chinese Trademark Magazine, November 11, 2024
Authors: Cao Na, Song Zhangming (Affiliation: Review Division VII, Trademark Office, CNIPA)
