China Trademark Office now accepting applications for “Retail and Wholesale Services” in Class 35

From 1 January 2013, the China Trademark Office will accept trade mark applications for “retail and wholesale services” in class 35 in relation to “pharmaceutical, veterinary and sanitary preparations and medical supplies”. This is an important and welcome development in PRC trade mark practice which previously rejected applications for retail and wholesale services.

The “Notice on Adding Trade Mark Specifications for Retail and Distribution Service Trade Marks” issued by the China Trademark Office on 14 December 2012 amends Class 35 of the 10th Edition of Goods and Services Classifications in China. A new sub-class 3509 has been created to cover the new services. Applications must adhere to the wording of the seven standard descriptions:

1. Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies;
2. Retail or wholesale services for pharmaceuticals;
3. Retail or wholesale services for pharmaceutical preparations;
4. Retail or wholesale services for sanitary preparations;
5. Retail or wholesale services for medical supplies;
6. Retail or wholesale services for veterinary medicines; and
7. Retail or wholesale services for veterinary preparations.

There will be a “sunrise period” until 31 January 2013 whereby all applications for these new categories of services will be deemed to have been filed on the same date. If two conflicting trade mark applications are filed on the same day, the trade mark that was used first in the PRC will be accepted. The use must be genuine use in relation to the designated services which have been made available to the public. For marks that have not been used, or the date of first use is the same, the applicants will need to come to an agreement. If an agreement cannot be reached, then priority will be decided by drawing lots.

Please also note, however, that an applicant is required to submit a copy of its business registration (or other documents of similar nature for foreign applicant) to show that the services applied for are covered within its scope of business. The application will be rejected if such document is not available. This may cause difficulties for some trade mark owners, especially overseas companies, where the relevant corporate documents may not set out the information as required by the China Trademark Office. At this stage, it is not clear how such cases will be handled by the China Trademark Office. However, trade mark owners should review their trade mark portfolios in view of this change in practice and decide whether to extend the trade mark coverage to these retail or wholesale services.

In light of this change in policy, we strongly advise trade mark owners, particularly those in the pharmaceutical and healthcare industry to consider filing applications in the PRC for these new services as soon as possible. This is recommended both as a protective and defensive measure. According to the Notice, applications for the new retail or wholesale services will not be deemed similar to applications or registrations for the underlying goods being sold, or the services “distribution for others” in class 35.