4 January 2013
With effect from 1 January 2013, China allows registration of trademarks in respect of retail and wholesale services for pharmaceutical, veterinary and sanitary products. It is the first time that China has opened up specific types of retail and wholesale services for trademark registration since the promulgation of the PRC Trademark Law in 1983.
Following its adoption of the Tenth Edition (Version 2013) of the International Classification of Goods and Services (“Nice Classification”), China announced in mid-December 2012 that seven specific types of new retail or wholesale services in Class 35 (under sub-class 3509) will be allowed for registration from 1 January 2013 onwards, namely:
- retail or wholesale services for pharmaceutical, veterinary, sanitary preparations and medicinal products;
- retail or wholesale services for medicine;
- retail or wholesale services for pharmaceutical preparations;
- retail or wholesale services for sanitary preparations;
- retail or wholesale services for medicinal products;
- retail or wholesale services for medicine for veterinary purposes; and
- retail or wholesale services for veterinary preparations.
On 25 December 2012, the China Trademark Office further issued an explanatory note detailing the transitional arrangement from 1 January 2013 to 31 January 2013 (“Transitional Period”).
Interested applicants for those newly added services should take note of the following:
- Each applicant, especially for a local Chinese entity, is required to submit its business licence to the China Trademark Office to prove that its scope of business is consistent with or relevant to the new services applied for. A foreign applicant is also required to submit documents of a similar nature (e.g. Memorandum of Articles, Business Registration Certificate, etc.) if it does not have a business licence; however, it is not yet clear how strict the China Trademark Office is about this requirement for foreign applicants.
- During the Transitional Period, all trademark applications in respect of the new services in Class 35 are deemed to be filed on the same day (which is a departure from the first-to-file principle in China). If there are two or more applications for identical or similar marks during the Transitional Period, the mark which has prior use (i.e. actual use in China before 1 January 2013) will prevail over the other. If the prior use commences on the same day or neither party can adduce prior use evidence, the applicants have to resolve the issue through friendly negotiations, failing which the China Trademark Office will decide by the drawing of lots. It is hoped that this arrangement will effectively deter bad faith applications and allow adequate time for retailers and wholesalers in the relevant industries to review and re-consider their trademark strategies in China.
- A generic specification such as “retail or wholesale services” or any specification which deviates from the prescribed wording of the aforesaid new services will not be accepted for registration.
- The new services will not be considered similar to the services of “sales promotion for others” in Sub-Class 3503 or the relevant pharmaceutical, veterinary, sanitary preparations and medicinal products covered in Class 5. Hence, existing registrations in respect of the said goods and/or services will be unlikely to block future applications for identical or similar marks in respect of the new services in Class 35.
In light of this latest development, it is high time for pharmaceutical, veterinary, sanitary product manufacturers and traders (especially for retailers and wholesalers) to review their trademark coverage and needs in China and consider whether trademark filings in respect of the new services are necessary, whether for actual use or for defensive purposes.