Trademark Office now accepting applications for certain retail services

In the past, trademark owners have been prevented from protecting their marks in mainland China in respect of retail and wholesale services. As these services were not listed in the International Classification of Goods and Services (Nice Classification), the Chinese Trademark Office took the view that these services were not acceptable for trademark registration. However, with the entry of certain descriptions of retail and wholesale services into the Nice Classification, China has adopted those specific retail and wholesale services listed by WIPO.

Last year, following its entry into the Nice Classification, the Trademark Office accepted the description “retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies”. As of January 1 of this year, the description “provision of an online marketplace for buyers and sellers of goods and services” is now accepted by the Trademark Office under Class 35 in accordance with the 2015 amendment by WIPO to the 10th edition of the Nice Classification. 

The Trademark Office distinguishes between these two types of retail services, placing them into different sub-classes. A new sub-class 3509 was created for the retail and wholesale services accepted in 2014. On the other hand, the recently accepted description is classified under the existing sub-class 3503, along with other services relating to sales promotion. 

As suggested by the heading of this sub-class, sub-class 3503 includes sales and promotion services provided for others and not in relation to the applicant’s own products. It is therefore arguable that the description “provision of an online marketplace for buyers and sellers of goods and services” does not cover the applicant’s own online sites for selling its own products. The Trademark Office could take the view that this description is only suitable for trademark owners such as Amazon, which provides an online marketplace for the sale of the goods of other parties. 

It remains to be seen whether the Trademark Office will impose such a restriction.

Nicollette Liu and Sandra Gibbons, Marks & Clerk, Hong Kong