ling zhao - adams & adams · letter of consent ccpit patent & trademark law office 23 the...
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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
CCPIT Patent & Trademark Law Office 5
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
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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
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To determine the scope of registration and protection of a trademark
Basic Standards
Non-relevant goods
Relevantgoods
Similar goods
Registeredgoods
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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
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Official Classification of Similar Goods and Services
Basic Standards
International Class
Subclasses
Groups
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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
…...
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The subclass system is used in every aspect of our trademark registration system, including
search, new application, opposition, invalidation, cancellation, etc.
Basic Standards
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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
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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
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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
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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
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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
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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
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Similarity of goods/services is one of the main reasons that the court overrule the decisions of
the TRAB.
Criteria of the Court on Similarity of Goods/Services
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%
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Supreme Court (2011) IP Administrative Case No. 37
Criteria of the Court on Similarity of Goods/Services
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
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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.
Criteria of the Court on Similarity of Goods/Services
Opposed mark Cited mark
Unprocessed plastics in Class 1 Thermoplastic elastomer in Class 17
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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
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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
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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
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(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.
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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.
Exceptions against Basic Standards
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
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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.
Exceptions against Basic Standards
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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.
Exceptions against Basic Standards
Opposed mark Cited mark
Spectacles; sunglasses; spectacle frames, etc.
Clothing, handbags, etc.
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Salad Dressing v. Peanut Butter
Class 30, 3016 Class 29, 2904
Identical marks; identical sales channels and consumers
Likelihood of confusion
Infringement
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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
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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
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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
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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
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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
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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.
Sales Promotion for Others
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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.
Sales Promotion for Others
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Thank you for your attention!