Whether service trademarks used by shopping malls and
supermarkets can be registered in International Class 35 and
receive protection as a registered trademark is rigorously debated
both academically and in judicial practice in China.
Opponents argue that the China Trademark Office (CTMO) has
clearly stated that wholesale and retail services are not included
in Class 35, and thus the services of shopping malls and
supermarkets cannot be classified as such (the CTMO published this
in their official written reply to Sichuan Provincial
Administration for Industry and Commerce, "Reply to the Issue
of Whether Shopping Mall and Supermarket Services are Included in
Class 35" on August 13, 2004). Furthermore, it stated that the
contents of "sale promotion (for others)" refer to
providing advice, planning, promotion and consulting for others to
sell goods or services. As a result of the Reply, even if a
trademark is registered under "sales promotion (for
others)", such marks of wholesale and retail enterprises, such
as department stores, supermarkets, wholesale markets, can hardly
be effectively protected by China's Trademark Law.
At present, the CTMO has not approved any trademark to be
registered on the services of wholesale and retail, which means
that only unregistered trademarks can be used on shopping malls and
supermarkets. Furthermore, the court also favored this view even
before the ninth international Nice Classification was implemented
Supporters of inclusion in Class 35 believe that the CTMO issued
the Reply based on the eighth edition of the international Nice
Classification, where the footnotes of Class 35 prescribe that the
class "does not include, in particular, enterprises whose main
function is to sell goods, namely, activities of commercial
enterprise". However, the aforesaid contents have been deleted
in the ninth edition of the international Nice Classification,
which came into force on January 1, 2007.
Before the ninth edition of the international Nice
Classification was implemented, there were a few judgments made by
Chinese courts that were inconsistent with the Reply. However,
after the application of the ninth edition, more judgments reflect
that the views of the courts have begun to change on such issues.
They are gradually going beyond the constraints of the Reply and
making independent judicial judgments about trademark protection.
In some cases, courts seem inclined to think that sales by
commercial enterprises, such as department stores, supermarkets and
large-scale wholesale markets, fall under the scope of "sales
promotion (for others)".
Currently, the CTMO still has not accepted nor approved any
trademark application relating to wholesale or retail services.
However, in the rules, decisions and judgments rendered by the
CTMO, the TRAB and the courts, the trademarks of several famous
supermarket and department store chains, such as Wal-Mart and Gome,
have been recognized as registered well-known trademarks under the
scope of "sales promotion (for others)" instead of being
unregistered well-known trademarks under supermarket and department
store services. So far, whether shopping mall and supermarket
trademarks can be registered and whether such trademarks can be
registered under the scope of "sales promotion (for
others)" in Class 35 is not clear. It is expected that future
laws, regulations, authoritative administrative interpretations and
judicial interpretations will clarify the current situation.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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