Study of Chinese Classification of Goods and Services
date: 2019-04-28Jane ChenRead by:
Most of foreign clients may be aware that there is a “trademark bible” called Chinese Classification of Goods and Services (“Chinese Classification” hereunder) in China. It is rather complicated, even mysterious to them.
Assessment of similarity between marks and assessment of similarity between goods are two global permanent topics in trademark matters. The Chinese Classification, which is made based on the International Classification of Goods and Services for the Purposes of the Registration of Marks, is a very important guide in assessing the similarity of goods in China. It now changes annually and the current edition is the 2019 version of the 11th edition.
There are 45 classes in the Chinese Classification. Each class is usually divided into many subclasses, and some subclasses are further divided into several parts or paragraphs. The division is made according to the similarity of the functions, raw materials, purposes, sales channels, and target consumers of the goods. China mainly adopts the subclass system. Generally, items sharing the same subclass number are considered similar while items falling under different subclasses are deemed dissimilar (except on certain specific circumstances as indicated in the Chinese Classification).
The above is the basic information for the Chinese Classification. How does it work in trademark matters? We illustrate it with the following three common trademark cases.
New trademark applications
First of all, we shall choose standard items from the Chinese Classification for new trademark applications, otherwise, we will encounter notification to amend.
Second, choosing class/subclass headings may not be acceptable as they are usually too broad to be accepted. Even some headings are acceptable, it is still not wise because it will not get the full protection as the client may intend to. We have some clients instructing us to file new applications with the goods, “clothing, footwear, headgear,” in Class 25. These goods description is just the heading of Class 25, and we understand that the client intends to get a full protection for the entire Class 25 by designing them. If we file the trademark application with these three specific items, they will be accepted, but it will just protect the mark over the goods in Subclasses 2501, 2507 and 2508 that the three items fall under, not the full protection that the client intends to.
To achieve the goal of full protection, we usually suggest selecting at least one item from each subclass or even each part/paragraph. Covering one item under a subclass would block others from registering other items under the same subclass. So essentially, by selecting any items of interest in one subclass, the client would be “covering the entire subclass” so that others will not be able to register a same or similar mark in that same subclass (even if they select different items from the same subclass), though they would not actually be claiming all the items that utilize that subclass.
Infeasibility of limiting goods for international registrations to overcome cited marks
It is a frequently asked whether it is feasible to overcome a cited mark by limiting or narrowing the descriptions of goods. The answer is no. It still lies in the reason that China adopts subclass system. The corresponding subclass after limitation will usually not change and the same cited mark will still bar the extension of the international registration.
Non-use cancellation action
In non-use cancellation actions, the authorities usually follow the subclass system as well. That is, the use of the mark over one designated goods will help to maintain the mark over the other similar goods. For example, if the client’s mark covers the goods, “soap” and “shampoos,” both falling under Class 3, Subclass 0301, the use evidence of “soap” will also help to maintain the mark over the similar goods of “shampoos.”
Should you still be confused about the Chinese subclass system, please feel free to contact us and we’ll provide you detailed suggestion over specific cases.