China adheres to the current version of Nice Classification and also has its own Chinese Classification of Goods and Services (“Chinese Classification”) which adopts a subclass system.  The subclass system determines the similarity between goods and services.  Under most circumstances, the goods/services classified into the same sub-class are considered similar and the goods/services falling in different sub-classes are not regarded as similar.  It means that identical or similar marks in the name of different holders can be registered for the goods/services within the same class but in different sub-classes.  For example, “clothing” under Class 25, Subclasses 2501-2505 is not deemed as similar to “footwear” under Class 25, Subclass 2507 or “headgear” under Class 25, Subclass 2508 and therefore, two identical or similar marks designating clothing and headgear respectively are able to co-exist with each other.

    The subclass headings are acceptable in China, however, it means only protection for the goods specifically reflected in the class heading, not the protection for the whole class which may be holder’s real intention.  Take Class 25 for example - the class heading is “clothing, footwear, and headgear.”  If the list of the goods designated for the international registration is “clothing, footwear, and headgear,” the approval of territorial extension of the international registration means that the protection scope is over the specific goods of “clothing, footwear, and headgear” only which are in Subclasses 2501-2505 (clothing; clothing falls under Subclasses 2501-2505), 2507 (footwear) and 2508 (headgear).  However, there are 12 subclasses (no subclass 2506 currently) in Class 25, which means that such designation does not cover protection for the remaining Subclasses 2509-2513 and thus cannot prevent others from registering or using the same or similar marks over the goods in Subclasses 2509-2513.  The holder should also select proper items in these remaining subclasses to gain protection for the whole Class 25.

    The English version of the Chinese Classification of Goods and Services edited by our firm can be reviewed on the page of Trademark Registration in Mainland China on Kangxin IP Platform (https://eservice.kangxin.com).

    For national applications, the CNIPA mainly only accepts “standard” items from the Chinese Classification and subclass headings are not acceptable as descriptions of goods/services.  If the applicant files an application with “non-standard” items, the CNIPA will issue a notification of amendment, requesting the applicant to amend the non-standard items into standard ones.

    While for international registrations, there is no such requirement for standard descriptions of goods or services.  On the contrary, for most of cases, the descriptions of the goods and services for international registrations are not standard according to the Chinese Classification, but they will not be requested to be amended into standard ones when designating China.  The examiners will still classify them into the corresponding subclasses according to their understanding of the descriptions, which will facilitate the examination of similarity of goods and services.

    Although it is not required by the CNIPA to adopt standard items for international registrations, there are still some items unacceptable in China, such as pharmaceuticals in Class 5 (which should be specified to “pharmaceutical for human use or for veterinary use), relevant goods and services concerning gambling in Classes 28 and 41 (such as gaming machines for gambling, slot machines [gaming machines] in Class 28, gambling services in Class 41), and astrology consultancy, spiritual consultancy in Class 45.  Moreover, except “retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies” in Class 35, the terms “retail services, wholesale services, sales services, mail ordering services” cannot be accepted in China.

    The CNIPA will issue a notification of ex officio refusal regarding the goods and services if they are not acceptable.  The time limit to respond to such notification is 15 days from the date the holder receives from WIPO the notification.  When the date of receipt of the notification is illegible or absent, the request for review of refusal may be presented within a period of 30 days from the date where the notification was sent by the International Bureau of WIPO (the receipt date of the notification under this circumstance will be deemed as 15 days after the date of notification by the WIPO to the holder).  The time limit cannot be extended but there will be a 3 month supplementary filing period after filing the initial request.

    - For some items, such as “pharmaceuticals,” in the notification of ex officio refusal, it will require the holder to specify whether the pharmaceuticals are for human purposes or for veterinary purposes.  The main purpose is to determine the similarity of goods, because in the Chinese Classification, pharmaceuticals for human purposes and pharmaceuticals for veterinary purposes fall under different subclasses and are not considered similar to each other.  Under this circumstance, the holder has two options:

    1)    Abandoning it; no need to do anything in this regard, i.e., no need to file the response to the CNIPA, and such item will be deleted from the international registration automatically.

    2)    Amending “pharmaceuticals” into “pharmaceuticals for human purposes” or “pharmaceuticals for veterinary purposes”, or both, before the WIPO.

    -  For the item, such as gambling related goods or services, such ex officio refusal cannot be overcome by amending the item as any other similar description related to gambling will still not be accepted by the CNIPA.  The holder has to abandon it.

    -   For the item, “retail services, wholesale services, sales services, mail ordering services,” the holder has the following three options:

    1)    Abandoning it; no need to do anything in this regard, i.e., no need to file the response to the CNIPA, and such item will be deleted from the international registration automatically.

    2)    Amending it into “retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies” if the holder is interested in such services.

    3)    Abandoning it and filing a separate national application in China directly with the standard items which are similar or close to the questioned items, such as “selling goods and services for others; sales promotion for others, and etc.” in Class 35.  Similar to option 1, there is no need to do anything in this regard for the international registration, i.e., no need to file the response to the CNIPA and such item will be deleted from the international registration automatically.  Instead, the holder then files the national trademark application before the CNIPA directly.

     When the holder chooses to amend the unacceptable goods or services, the holder needs to:

    1)    File the goods or services limitation/amendment before WIPO soon concerning China; and

    2)    File the review of refusal before the CNIPA to keep the mark alive, stating that the goods or services limitation has been or will be filed before WIPO.  The relevant application form for the goods or services limitation/amendment could be submitted within the initial 15-day deadline, or within the following 3 month supplementary filing period from the initial filing.

    There is another situation of Ex Officio Examination concerning Goods or Services.  That is, the goods or services for the international registrations are classified into a wrong class according to the Chinese Classification, for example, the goods, “pillows” were classified into Class 24 instead of Class 20.  The CNIPA will issue a notification of ex officio refusal.  The time limit to respond to such notification is the same as above situation when the goods or services are not acceptable.  There are two circumstances and different actions needed (illustrated with example):

    1.   If the international registration also covers Class 20, the holder only needs to file the review of refusal within the deadline to keep the international registration alive, and at the same time, move the goods “pillow” to Class 20 before WIPO.  The application form for the correction before WIPO should be submitted to the CNIPA either within the initial deadline or within the following three month supplementary filing period after the initial filing of the review of refusal.

    2.    If the international registration does not cover Class 20, the holder must abandon the goods.  Under this situation, the holder does not need to do anything; no need to file the review of refusal and the goods “pillows” will be automatically deleted from the international registration.

    Holders must appoint a local representative to respond to a provisional refusal.  Information about local representatives can be obtained from the CNIPA’s website.  Our firm, Kangxin Partners, P.C. (http://en.kangxin.com), providing comprehensive IP services, is glad to assist you.  Please feel free to contact me at jane.chen@kangxin.com with any inquires or questions.

    This is part three of a series of articles on the topic of international registrations designating China.  More articles will be available soon.