LING ZHAO. CCIPT PATENT & TRADEMARK LAW OFFICE, Trademark Attorney

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2 LING ZHAO CCIPT PATENT & TRADEMARK LAW OFFICE, Trademark Attorney

3 Ms. ZHAO joined the firm in the year 2000, and has been practicing trademark law ever since for about 16 years. Her expertise ranges from trademark prosecution, consultation on trademark registrability, assessment of infringement, availability search, recognition of wellknown trademark, negotiating for the transfer of trademarks and licensing, domain name dispute, trademark protection strategy to trademark litigation. Ms. Ling ZHAO is a qualified trademark attorney and attorney at law. She passed the Chinese bar exam in the year Ms. ZHAO earned her master degree in law from Renmin University of China with major in intellectual property law, trained in the BSKB law firm in USA in 2008, and in Benjamin N. Cardozo School of Law, Yeshiva University, New York, in She represents many well-known brand owners in developing their brand protection strategies and protecting their trademark rights in China. Among the clients represented by Ms. ZHAO, there are top 500 Fortune companies from the United States, Europe and Asia, in various industries, including world renowned petrochemical company, pharmaceutical companies, health products companies, fashion brand owners, etc. Ms. ZHAO obtained wellknown trademark recognition for the famous LG and MOBIL trademarks in administrative and civil litigations before the court, and for NOVO NORDISK in invalidation proceedings before the Trademark Review and Adjudication Board. Ms. ZHAO and her team won a retrial case before the Supreme People s Court in 2015.

4 Similarity of Goods and Services From Chinese Perspectives Ling ZHAO CCPIT Patent and Trademark Law Office London - November, 2016 CCPIT Patent & Trademark Law Office 4

5 Agenda Basic standards applied by CTMO and TRAB Criteria applied by court Exceptions against basic standards Retails and whole sale services v. sales promotion for others CCPIT Patent & Trademark Law Office 5

6 Basic Standards Definition by Examination Guidelines of CTMO and TRAB and Judicial Interpretation Similar goods refer to those that are identical in terms of function, usage, production units, sales channels and consumers, or those that are generally considered relevant by the relevant public, and the use of the same or similar marks thereon would likely mislead the public as to the origins thereof. Similar services refer to those that are similar in purpose, content, means and consumers, or those that are considered relevant by the relevant public, and the use of the same or similar marks thereon would likely mislead the public as to the origins thereof. CCPIT Patent & Trademark Law Office 6

7 Basic Standards To determine the scope of registration and protection of a trademark Non-relevant goods Relevant goods Similar goods Registered goods CCPIT Patent & Trademark Law Office 7

8 Basic Standards Nice Agreement & Official Classification of Similar Goods and Services China joined Nice Agreement on May 5, 1994, and the Nice Agreement was effective in China as of August 9, The current edition of the Official Classification of Similar Goods and Services adopted by China Trademark Office is based upon the 10 th Edition of Nice Agreement, published in February CCPIT Patent & Trademark Law Office 8

9 Basic Standards Official Classification of Similar Goods and Services International Class Subclasses Groups CCPIT Patent & Trademark Law Office 9

10 Class 7 Basic Standards Subclass system is structured according to the features of the goods/services, namely in terms of function, usage, raw materials, production units, sales channels, consumers, etc. 0701: agriculture devices 0702: mechanical instruments and apparatus for fishing and animal husbandry 0703: mechanical instruments and apparatus for lumbering 0704: mechanical instruments and apparatus for papermaking industry 0705: mechanical instruments and apparatus for printing industry... CCPIT Patent & Trademark Law Office 10

11 Basic Standards The subclass system is used in every aspect of our trademark registration system, including search, new application, opposition, invalidation, cancellation, etc. CCPIT Patent & Trademark Law Office 11

12 Basic Standards According to official criteria, we should use the standard descriptions provided in the official classification for filing new applications. Class headings are generally unacceptable. Terms like machines, parts and fittings are never acceptable. CCPIT Patent & Trademark Law Office 12

13 Basic Standards Official Classification of Similar Goods and Services v. Similarity of Goods and Services Official guideline for China Trademark Office (CTMO) and Trademark Review and Adjudication Board (TRAB) in routine work The basic official criteria to determine similar goods and services, but not the binding rule. Goods and services in each international class are further classified into different groups according their function, usage, raw materials, sales channels and consumers. The official classification of similar goods and services is updated at least once each year. CCPIT Patent & Trademark Law Office 13

14 Class 25 Basic Standards Subclass System v. Similarity of Goods and Services 2501: clothing 2502: baby suits 2503: swimsuits 2504: raincoats 2505: dancing clothes 2507: shoes 2508: caps 2509: socks 2510: gloves 2511: neckties; mufflers 2512: leather belts for clothing CCPIT Patent & Trademark Law Office 14

15 Basic Standards Subclass System v. Similarity of Goods and Services Convenient noodles, rice noodles, flour products, edible starch products, sugar, confectionary Soybean sauces, vinegar, bean products Subclasses 3303,3004,3007,3009,3012 Subclasses 3011, 3015 CCPIT Patent & Trademark Law Office 15

16 Basic Standards Subclass System Pros and Cons Pros Efficiency Transparency and predictability Standard criteria Cons Inflexibility Restricted descriptions of goods and services Hard to get the edge-cutting products accepted CCPIT Patent & Trademark Law Office 16

17 Criteria of the Court on Similarity of Goods/Services The official classification of similar goods and services is taken as reference to determine similarity of goods and services, but not the binding rule. The court would take the following factors into consideration, in addition to the function, usage, sales channels, consumers and producers of the goods/services: - Similarity of the marks; - Distinctiveness and reputation of the prior mark; - Intension of the applicant of the later mark; - How the two marks have been used in the market. The principle is to determine if there is likelihood of confusion. CCPIT Patent & Trademark Law Office 17

18 Criteria of the Court on Similarity of Goods/Services Similarity of goods/services is one of the main reasons that the court overrule the decisions of the TRAB. Year Percentage of the TRAB decisions overruled due to similarity of goods/services among all the overruled cases % % % % % % CCPIT Patent & Trademark Law Office 18

19 Criteria of the Court on Similarity of Goods/Services Supreme Court (2011) IP Administrative Case No. 37 Goods of opposed mark Shoes, boots in subclass 2507 Goods of cited marks Clothes, neckties, mufflers, leather belts in subclasses 2501, , leather bags, travel bags, briefcases in Class 18 CCPIT Patent & Trademark Law Office 19

20 Criteria of the Court on Similarity of Goods/Services Supreme Court Retrial (2014) Administrative Case No. 29 Opposed mark Cited mark Unprocessed plastics in Class 1 Thermoplastic elastomer in Class 17 Supreme Court: The goods of the opposed mark are closely relevant to the goods of the cited one in function, usage, production unit, sales channels and consumers. The two marks are identical. The cited mark has obtained certain reputation prior to the filing date of the opposed mark, and the opposed mark was filed in bad faith, as the opposed party, involved in the same business, should have known about the cited mark. CCPIT Patent & Trademark Law Office 20

21 Exceptions against Basic Standards There are exceptions in particular cases under special circumstances, wherein goods/services in the same subclass are deemed dissimilar; goods/services in different subclasses in the same international class are deemed similar; goods/services in different international classes are deemed similar. CCPIT Patent & Trademark Law Office 21

22 Letter of Consent With a letter of consent, the later mark is approved for registration on the same or similar goods with the two prior cited marks by the TRAB. IR No MAQUET VOLUME REFLECTOR v. IR No MAQUET and IR No MAQUET Goods: Classes 9 and 10 General criteria of the TRAB to grant registration based upon a letter of consent or coexistence agreement: The two marks are not identical. Formality requirement: notarization and legalization CCPIT Patent & Trademark Law Office 22

23 Letter of Consent The mark filed for registration Medical apparatus and devices for biopsy, biopsy needles in subclass 1001 The cited mark Message apparatus, message gloves in subclass 1001 The TRAB rule that the later mark should be approved for registration, as the owner of the cited mark has issued a letter of consent, notarized and legalized, to the use and registration of the later mark goods in Class 10, and the goods are somewhat different in terms of function, usage and sales channels. CCPIT Patent & Trademark Law Office 23

24 Letter of Consent (2014) Beijing High Court IP Administrative Case No v. The mark filed for registration Display of goods, TV advertising, etc. The cited mark Advertising services, etc. Beijing High Court cancelled the decisions of the first instance court and the TRAB, and approved the registration of the later mark. CCPIT Patent & Trademark Law Office 24

25 Exceptions against Basic Standards Art. 32 of China Trademark Law: protect trademark that has been used and obtained certain reputation in the market against hijacking. Goods of the opposed mark Tea, ice tea, tea beverage, etc. Services on which the cited mark has been used Tea shop, cold and hot drink shop services TRAB: The goods/services are closely relevant, and there is the likelihood of confusion. The cited mark is unique and has obtained certain reputation in Taiwan by prior use and the opposed party should have known about it, as he is also from Taiwan. CCPIT Patent & Trademark Law Office 25

26 Exceptions against Basic Standards Beijing High Court (2014) IP Administrative Case No non-use cancellation Goods: metal fittings for furniture, hardware, metal lock, non-electric, safe box, metal hinge, etc. in Class 6 The court rule that the use of the mark on locks is sufficient to maintain the registration on all its registered goods, for these goods are similar. CCPIT Patent & Trademark Law Office 26

27 Exceptions against Basic Standards Opposed mark Spectacles; sunglasses; spectacle frames, etc. Cited mark Clothing, handbags, etc. The opposed party advertised that it was from US, and claimed to have the same characteristics as the GAP clothing, and used the mark in the same style as GAP. CCPIT Patent & Trademark Law Office 27

28 Salad Dressing v. Peanut Butter Class 30, 3016 Class 29, 2904 Identical marks; identical sales channels and consumers Likelihood of confusion Infringement CCPIT Patent & Trademark Law Office 28

29 Online Taxi Call APP Sales promotion for others, business management assistance in Class 35 Information transmission, computer aided image and information transmission in Class 38 Transport agency; transport information in Class 39 Not infringement CCPIT Patent & Trademark Law Office 29

30 Considerations The official classification of similar goods and services is the general rule the examiners would apply in most cases. Exceptions are possible, provided that The prior cited mark is highly distinctive; The goods/services of the two marks are closely relevant; The prior cited mark has certain reputation; The opposed mark was filed in bad faith; The two marks are highly similar; The use and registration of the opposed mark would likely mislead the public and cause confusions. CCPIT Patent & Trademark Law Office 30

31 Retail and Wholesale Services v. Sales Promotion for Others Class 35 This class includes, in particular The bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programs. Subclass 3503: import-export agency; sales promotion for others; procurement services (purchasing goods or services for other enterprises); marketing; telephone services; providing online market for sellers and purchasers of goods and services CCPIT Patent & Trademark Law Office 31

32 Sales promotion for others Does the use of a trademark for retail or wholesale services count as effective trademark use on the registered services sales promotion for others? CCPIT Patent & Trademark Law Office 32

33 Sales Promotion for Others Trademark: Services: sales promotion for others in Class 35 Opposed mark: Services: engineering, chemical analysis, etc. in Class 42 Ruling of court: WAL-MART is a well-known mark used on sales promotion in Class 35. The opposed mark is rejected in accordance with Art. 13 of China Trademark Law. CCPIT Patent & Trademark Law Office 33

34 Sales Promotion for Others Trademark: Services: sales promotion for others, display of goods, advertising, etc. in Class 35 Infringement lawsuit with final decision made by Zhejiang High Court: infringement established. CCPIT Patent & Trademark Law Office 34

35 Sales Promotion for Others Official Classification of Similar Goods and Services issued in 2002 (the Eighth Edition of Nice Agreement) : Class 35 doesn t include in particular activities of the enterprises whose main business is to sell products. Beijing High Court: Sales promotion for others in Class 35 refer to those services, including providing advise, planning, promotion, consultation for others sales of products. The services are provided to dealers or providers of goods/services. Such services don t include retails or wholesales. Retail or wholesales services generally are not acceptable in China, except for retail or wholesales of pharmaceutical, veterinary, sanitary preparations and medical products. Where the trademark registrants are supermarkets or department stores, their use of the trademarks tend to be acceptable as effective use on sales promotion for others. Such activities like spreading promotional posters, providing promotional plans, consultation, etc. could be regarded as sales promotional for others. CCPIT Patent & Trademark Law Office 35

36 Thank you for your attention! CCPIT Patent & Trademark Law Office 36

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