LING ZHAO - Adams & Adams · Letter of Consent CCPIT Patent & Trademark Law Office 23 The TRAB rule that the later mark should be approved for registration, as the owner of the cited

LING ZHAOCCIPT PATENT & TRADEMARK LAW OFFICE, Trademark Attorney

Ms. Ling ZHAO is a qualified trademark attorney andattorney at law. She passed the Chinese bar exam inthe year 2012. Ms. ZHAO earned her master degree inlaw from Renmin University of China with major inintellectual property law, trained in the BSKB law firmin USA in 2008, and in Benjamin N. Cardozo School ofLaw, Yeshiva University, New York, in 2015.

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 well-

known trademark, negotiating for the transfer of trademarks and licensing, domain name

dispute, trademark protection strategy to trademark litigation.

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 well-

known 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.

CCPIT Patent & Trademark Law Office 4

Similarity of Goods and Services

From Chinese Perspectives

Ling ZHAO

CCPIT Patent and Trademark Law Office

London - November, 2016


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

Agenda


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.

Basic Standards


To determine the scope of registration and protection of a trademark

Basic Standards

Non-relevant goods

Relevantgoods

Similar goods

Registeredgoods


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, 1994.

The current edition of the Official Classification of Similar Goods and Services adopted by

China Trademark Office is based upon the 10th Edition of Nice Agreement, published in

February 2016.

Basic Standards


Official Classification of Similar Goods and Services

Basic Standards

International Class

Subclasses

Groups


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.

Basic Standards

Cla

ss7

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

…...


The subclass system is used in every aspect of our trademark registration system, including

search, new application, opposition, invalidation, cancellation, etc.

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.

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.

Basic Standards


Subclass System v. Similarity of Goods and Services

Basic Standards

Cla

ss 2

5

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


Subclass System v. Similarity of Goods and Services

Basic Standards

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


Subclass System – Pros and Cons

Basic Standards

Pros Cons

Efficiency Inflexibility

Transparency and predictability Restricted descriptions of goods and services

Standard criteria Hard to get the edge-cuttingproducts accepted


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.

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

2010 12%

2011 18%

2012 24%

2013 22%

2014 16%

2015 11%


Supreme Court (2011) IP Administrative Case No. 37


Goods of opposed mark Goods of cited marks

Shoes, boots in subclass 2507 Clothes, neckties, mufflers, leather belts in subclasses 2501, 2509-2512, leather bags, travel bags, briefcases in Class 18


Supreme Court Retrial (2014) Administrative Case No. 29

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.


Opposed mark Cited mark

Unprocessed plastics in Class 1 Thermoplastic elastomer in Class 17


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.

Exceptions against Basic Standards


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. 1007230 MAQUET VOLUME REFLECTOR v.

IR No. 101271 MAQUET and IR No. 680058 MAQUET

Goods: Classes 9 and 10

General criteria of the TRAB to grant registration based upon a letter of consent or co-

existence agreement:

The two marks are not identical.

Formality requirement: notarization and legalization

Letter of Consent


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.

Letter of Consent

The mark filed for registration The cited mark

Medical apparatus and devices for biopsy, biopsy needles in subclass 1001

Message apparatus, message gloves in subclass 1001


(2014) Beijing High Court IP Administrative Case No. 2191

v.

Beijing High Court cancelled the decisions of the first instance court and the TRAB, and approved

the registration of the later mark.

Letter of Consent

The mark filed for registration The cited mark

Display of goods, TV advertising, etc.

Advertising services, etc.


Art. 32 of China Trademark Law: protect trademark that has been used and obtained certain

reputation in the market against hijacking.

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.


Goods of the opposed mark Services on which the cited mark has been used

Tea, ice tea, tea beverage, etc. Tea shop, cold and hot drink shop services


Beijing High Court (2014) IP Administrative Case No. 2567 – 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.



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.


Opposed mark Cited mark

Spectacles; sunglasses; spectacle frames, etc.

Clothing, handbags, etc.


Salad Dressing v. Peanut Butter

Class 30, 3016 Class 29, 2904

Identical marks; identical sales channels and consumers

Likelihood of confusion

Infringement


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


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.

Considerations


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

Retail and Wholesale Services v. 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”?

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.

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.



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.



Thank you for your attention!

LING ZHAO - Adams & Adams · Letter of Consent CCPIT Patent & Trademark Law Office 23 The TRAB rule that the later mark should be approved for registration, as the owner of the cited

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