2024-07-09 Trademarks Jie ZHANG

In daily business, the author found that an applicant registered the trademark for its products, and generally extended the trademark protection to the sales service of its products. According to the Classification Table of Similar Goods and Services, the most suitable item belongs to the Class 35. Then, does registration of Class 35 really protect the sales services of a trademark registrant?

In the Classification Table of Similar Goods and Services, Class 1 to 34 are goods, and Class 35 to 45 are services. Class 35 belongs to the services that mainly includes: Advertising; Business Operation, Organization and Management; Office Affairs and Other Services. A note to Class 35 in the table reads: Class 35 mainly covers services involving the business management, operation, organization and administration of commercial or industrial enterprises, as well as advertising, marketing and promotion services.

As per the annotation of the class mentioned above, it can be summed up as two points: (1) trademarks under Class 35 are service trademark; (2) The purpose of this kind of service is to facilitate the operation and management of commercial enterprises, as well as to provide advertising services for various commodities and services.

Services under Class 35 are designed to assistance. So, what is " Assistance "? Assistance means to provide advice, effort, or other support to another person. There is "assistance" when it comes to other people, just dealing with their own affairs, not help. Hence, such services provide services for the commercial marketing and management of others. Only the commercial operation, management and advertising of one's own goods do not require registration of a trademark under Class 35, except for the retail and wholesale services of medicines and medical supplies. "Retail and wholesale services of pharmaceuticals and medical supplies" belongs to the Group 3509, which is a new service item in the 10th edition of the Classification Table of Similar Goods and Services for 2014.

As the most controversial service group in Class 35, 3501 advertising service and 3503 marketing for others are the key points of whether it is necessary for other enterprises to register Class 35 trademarks.

1. Only register the goods trademark, does not register advertising service trademark under the group 3501 of Class 35, whether the enterprise can publicize its goods?

  The answer is that enterprises can advertise their goods even without registering the advertising service trademark of the group 3501. 

Chinese trademark law stipulates that the use of general goods trademarks means that the trademarks are used for goods, goods package, containers and transaction documents in connection with the sale of goods, or are used for advertising, exhibitions and other commercial activities to identify the source of goods. Hence, it is reasonable and legal for an enterprise to use its goods trademark for its own goods advertising and other commercial activities.

2. Only registers the goods trademark, but not register service trademark under the group 3503, and other people register and obtain service trademarks under the group 3503, which are the same or similar to the service trademark of the enterprise, will the enterprise have the risk of infringement?

The answer is, without special circumstances, other persons may register and obtain Group 3503 service marks which are identical or similar to the goods trademark of the enterprise. However, the service "selling for others" in the group 3503, refers to helping others to sell goods. If others obtain Group 3503 service trademark, it will not pose the infringement risk of promoting and selling their own goods.

3. Will the use of the service trademark infringe the exclusive right of the prior registered goods trademark?

If someone else uses the same or similar logo of the prior registered goods of the enterprise as a store name, opens a store to sell inferior goods, and infringes the trademark interests of the enterprise, the enterprise can fully protect its trademark rights according to the goods trademark.

Also, some enterprises take into account that, if protection is enabled after the finding, it will cost time and laborious, it is better to apply for the registration of trademarks under the group 3503. This operation will involve a problem, that is, the enterprise registered service trademark under the group 3503, the enterprise will encounter with the problem posed by the trademark may be revoked for non-use for three consecutive years . In the procedures of such kind of revoking, the behavior of selling and promoting their own goods will not be identified as the use of 3503 service trademark "promoting for others".

Most importantly, if the enterprise's online store is a private brand or authorized brand store, flagship store, there is no need to register trademarks under the Class 35; If the online store is a variety of brands of multiple enterprises operating a certain kind of goods, that is, as a comprehensive sales platform, you can combine your store name to register service trademarks.

4. Should enterprises engage in supermarket retail need to register service mark under the group 3503?

The answer is yes, but registration for other groups is also required. The exact English corresponding to the group 3503 is "sales promotion for others", that is, sales promotion is mainly conducted through promotion means, rather than the daily sales mode of supermarkets. The services provided by the supermarket are comprehensive, such as merchandising display service (group 3501), price comparison service (group 3502), promotion (group 3503), etc., are all services provided by the supermarket. Hence, only registration under the group 3503 of protection is not comprehensive, and the scope of registration needs to be expanded.

To sum up, whether enterprises need to register trademarks in the Class 35 and which group to register, or according to their respective conditions, they should listen to the advice of professional agencies, make a good brand planning, and choose an optimal way to escort the development of their trademark brand.

Trademark applications including trademark registration, alteration, assignment, renewal, recordation of trademark licensing contracts, legal consultations, Planning for IP protection.
Jie ZHANG Senior Partner; Business Direc 联系电话:010-68390889
擅长领域:Trademark applications including trademark registration, alteration, assignment, renewal, recordation of trademark licensing contracts, legal consultations, Planning for IP protection.
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