In the latest update from the MARQUES China Team, Xiaoping Wei, Yaru Yao and Ling Zhao discuss the recent CNIPA Guidance on Trade mark Registration and Use on Services in Class 35.

You may know that retail and wholesale services for general commodities, except for pharmaceutical, sanitary or veterinary products, are not acceptable for trade mark registration in China.

In practice, we sometimes wonder how to prove use of trade marks on services in class 35, such as advertisements, providing commercial information, marketing services, in order to defend a registration againt a non-use cancellation. We aso ask: how shall we enforce our trade mark right for services in class 35?

On 7 December, the China National Intellectual Property Administration (CNIPA) issued the Guidance on Trade mark Registration and Use on Services in Class 35. This aims to enable relevant entities to correctly understand the connotation and denotation for services in class 35, to learn the original idea for classification of services, and to file trade mark applications properly.

Highlights of the Guidance

Services in class 35 under the Classification of Similar Goods and Services mainly include businesses involving services for business management, operation, organisation and administration, as well as advertising, marketing and sales promotion services conducted by commercial or industrial enterprises. The sales of goods per se are not considered as services and the relevant services in class 35 are provided for others.

Generally speaking, entities engaged in manufacture of goods do not need to apply for trade mark registrations on services in class 35.

The Guidance provides explanations for 11 groups of services in class 35. The relevant services include “advertising-related services” in subclass 3501, “business management related services, franchise related services” in subclass 3502, “import and export agency services, sales promotion for others, providing online marketing services” in subclass 3503, “personnel related services” in subclass 3504, “office functions-related services” in subclass 3506, “accounting related services” in subclass 3507, “seeking sponsorship” in subclass 3508 and “retail or wholesale services of drugs and medical supplies” in subclass 3509.

As for proper use of the trade marks on services in class 35, the Guidance provides suggestions. The main points are:

Trade mark registration

Correctly understand the connotation and denotation of the services in class 35 and register your mark on the proper services.

Trade mark non-use cancellation

The following tips for collecting evidence in proof of use of the trade mark on services in Class 35 are provided for reference:

• Indicate trade mark, registration number, services content, etc in trading documents such as contracts and invoices.
• Preserve advertising materials for the service mark in various media and indicate the trade mark in service places.
• If there is more than one registered trade mark on related services, use them separately and keep the respective evidence of use for each mark.
• If the service mark is identical with the trade name, indicate the registered symbol on the trade mark to distinguish the use from the trade name.
• If there is no use of the mark due to justified reasons such as force majeure, governmental policy restriction or insolvency liquidation, collect and sort out relevant defensive evidence.

Trade mark enforcement

Follow the good faith principle in protection and enforcement of trade mark rights on services and avoid abuse of trade mark rights.

When enforcing trade mark right on goods by the owner and licensee, be mindful to use the mark properly and avoid infringing others’ rights. The use of a trade mark on the front door of the store for selling one’s own goods is not considered the use of services for “sales promotion for others” in class 35. In that case, even with a trade mark registration for “sales promotion for others” in class 35, the user might still face the risk of infringing a third party’s trade mark right.

By Xiaoping Wei, Yaru Yao and Ling Zhao. The authors are members of CCPIT Patent and Trade mark Law Office and Ling Zhao is a member of the MARQUES China Team