CTMO now accepts applications for retail and wholesale services for pharmaceuticals

China

The China Trademark Office (CTMO) has issued guidelines for the handling of trademark applications relating to retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies.

The 2013 version of the 10th edition of the Nice Classification adds, among other things, “retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies” in Class 35.  Responding to these changes, on December 14 2012 the CTMO issued a notice, entitled “Notice regarding applications to register service marks for the newly-added retail or wholesale services”, which introduced a transition period and provided guidelines regarding the implementation of the changes:

  1. A new sub-class - sub-class 3509 - was created to capture the newly-added service indications. Sub-class 3509 is to contain seven service indications, namely:
  1. retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies;
  2. retail or wholesale services for medicines;
  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 medicines for veterinary use;
  7. retail or wholesale services for veterinary preparations.
  1. Sub-class 3509 relates to the services of bringing together pharmaceutical, veterinary and sanitary preparations and medical supplies to enable customers to conveniently view and purchase these goods in a store or through an internet sales platform. The newly-added service indications do not protect the products themselves.


  2. Trademark applicants wishing to protect their marks in respect of the above-mentioned services must use the exact service indications identified. The following service indications are given as examples of what the CTMO will find unacceptable: “retail or wholesale services”, “retail or wholesale of medicines”, “retail or wholesale services for [name of a kind of medicine]”, “retail or wholesale services for [a certain brand of medicine]”, “providing information about the retail or wholesale of medicines”, “providing free consultation services to customers when conducting retail sales of medicines” and “retail or wholesale services relating to preparations made by medical enterprises”.


  3. Among the seven newly-added service indications:
    • Item (i) is considered similar to items (ii) to (vii);
    • Items (ii), (iii), (iv) and (v) are considered to be similar services;
    • Items (ii), (iii), (iv) and (v) are not considered to be similar to items (vi) and (vii);
    • Items (vi) and (vii) are considered to be similar services.
       
  4. In relation to existing goods and services indications:
    • The newly-added services are not considered to be similar to the actual products being sold by retail or wholesale; and
    • The newly-added services are not considered to be similar to existing services in Class 35, such as “sales promotion for others”.
       
  5. Transition period:
    • All trademark applications covering the newly-added services filed during the transition period - from  January 1 to January 31 2013 - will be treated as having been filed on the same day. 
    • During the transition period, electronic filings are not acceptable.
    • Trademark applications covering the newly-added services should be supported by the production of a business licence showing that the applicant is allowed to carry out the kind of services applied for.
    • The right of exclusive use of a trademark shall be determined in accordance with the following principles:
      • Where applications are filed on the same day, the party which has prior use of the trademark in relation to the services applied for will enjoy the right of exclusive use of the mark;
      • Where two applicants used their marks on the same day or where no use has been made by either of them, the parties should negotiate between themselves; if the parties do not wish to negotiate or if the negotiation is unsuccessful, the right of exclusive use of the relevant trademark will be determined by drawing lots.
      • 'Use' of a trademark in relation to the newly-added services means open and genuine use of a trademark in relation to the newly-added services before January 1 2013.
    • The above-mentioned measures apply only to applications filed during the transition period.

Recommendations to trademark owners:

  • “Retail or wholesale services” have hitherto not been accepted for registration in China and the newly-added services are the only ones now expressly allowed by the CTMO. Prior to the new arrangement, many companies wishing to protect their marks in relation to retail and wholesale services applied to protect their marks in relation to other Class 35 services, such as “sales promotion for others”, “advertising” and “import-export agencies”. In view of the guidelines issued by the CTMO, trademark owners should not simply rely on their old Class 35 registrations, but should file application during the transition period to protect their marks in relation to the newly-added services if necessary.
  • The requirement to produce a business licence showing that the applicant is permitted to carry out the newly-added services applies only to trademark applications filed during the transition period. This suggests that, once the transition period is over, there may be large numbers of applications to protect marks for the newly-added services. However, trademark owners in the relevant business should file applications within the transition period. Trademark owners who are not in the relevant business, but are concerned about third parties obtaining pre-emptive registrations in relation to the newly-added services, should also consider filing applications during the transition period or as soon as possible after the transition period is over.
  • The requirement to produce a business licence may be relevant only to Chinese applicants, as many foreign jurisdictions do not require companies to expressly set out the scope of their business in incorporation documents or business registrations. Although it is not clear from the CTMO notice whether foreign applicants should also file evidence relating to the use or the right to use their mark for the newly-added services in support of applications filed during the transition period, where possible, foreign applicants should file evidence showing that they are engaged in the relevant business - indeed, with regard to applications deemed to have been filed on the same day under the transitional arrangements, the exclusive right to use a trademark will be granted to the party that can show prior use of the mark.

Rebecca Lo, Rebecca Lo & Co, Hong Kong

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