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China adopts the Nice Classification of Goods and Services, but additionally uses a sub-classification system which is unique to China. In China, each of the Nice classes has been further divided into sub-classes of goods or services. The sub-classes are structured according to the features of the goods and services so, for example, the sub-classes aim to group together goods which are used for the same purpose, are made of the same material and target the same consumers within the same sub-class.
The sub-class system is highly relevant to Chinese trade marks practice and is used by the Chinese Trade Marks Office and the Trade Marks Review and Adjudication Board (TRAB) in deciding whether to raise relative grounds objections to new applications and to make decisions in opposition, invalidity and cancellation proceedings. We will consider how the Office and TRAB use the sub-classification system more in the next article in this series.
If you are filing a new application in China it is important to consider the sub-classification system when drafting a specification of goods and services to ensure you have sufficient coverage to protect your brand. This is particularly important and often overlooked, if you are designating China under an International registration. Obtaining sufficient scope to protect your brand in China can often involve covering terms that would not otherwise be included and it is essential that these terms are included in the national trade mark upon which an International registration is based. As an example, a Chinese application/registration for ‘clothing; footwear; headgear’ in class 25 would not cover gloves, which would need to be included separately in the specification. It is also worth noting that recent practice in China requires that trade mark specifications consist only of standard terms which are included in the official guide to the classification of goods and services and non-standard terms have been receiving objections.
Another thing to consider when drafting your specification is the use of terms which are commonly used outside of China but are unacceptable under Chinese practice. An example of this is retail services. Many territories accept the inclusion of retail services in class 35, although sometimes it is necessary to phrase the term in a particular way e.g. in the EU and the UK it is necessary to state the goods in relation to which the retail services are provided. In China, retail services per se are generally unacceptable in a Chinese national application, Our experience is that sometimes the term ‘the bringing together, for the benefit of others, of a variety of goods, enabling consumers to conveniently view and purchase those goods’ is accepted if included in a Chinese designation of an International registration, although the approach does seem to be inconsistent and this term is not acceptable in a Chinese national application. If you were filing a national application, say, in the UK, with the intention of using it as the basis of an International application which designates China, you might want to consider using both ‘retail services in relation to…..’ and ‘the bringing together of….’ wording if you would like protection for these services.
Further articles in this series will look at the similarity of goods and services.
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