With effect from 1 January 2013, China allows registration of
trademarks in respect of retail and wholesale services for
pharmaceutical, veterinary and sanitary products. It is the first
time that China has opened up specific types of retail and
wholesale services for trademark registration since the
promulgation of the PRC Trademark Law in 1983.
Following its adoption of the Tenth Edition (Version 2013) of
the International Classification of Goods and Services ("Nice
Classification"), China announced in mid-December 2012 that
seven specific types of new retail or wholesale services in Class
35 (under sub-class 3509) will be allowed for registration from 1
January 2013 onwards, namely:
retail or wholesale services for pharmaceutical, veterinary,
sanitary preparations and medicinal products;
retail or wholesale services for medicine;
retail or wholesale services for pharmaceutical
retail or wholesale services for sanitary preparations;
retail or wholesale services for medicinal products;
retail or wholesale services for medicine for veterinary
retail or wholesale services for veterinary preparations.
On 25 December 2012, the China Trademark Office further issued
an explanatory note detailing the transitional arrangement from 1
January 2013 to 31 January 2013 ("Transitional
Interested applicants for those newly added services should take
note of the following:
Each applicant, especially for a local Chinese entity, is
required to submit its business licence to the China Trademark
Office to prove that its scope of business is consistent with or
relevant to the new services applied for. A foreign applicant is
also required to submit documents of a similar nature (e.g.
Memorandum of Articles, Business Registration Certificate, etc.) if
it does not have a business licence; however, it is not yet clear
how strict the China Trademark Office is about this requirement for
During the Transitional Period, all trademark applications in
respect of the new services in Class 35 are deemed to be filed on
the same day (which is a departure from the first-to-file principle
in China). If there are two or more applications for identical or
similar marks during the Transitional Period, the mark which has
prior use (i.e. actual use in China before 1 January 2013) will
prevail over the other. If the prior use commences on the same day
or neither party can adduce prior use evidence, the applicants have
to resolve the issue through friendly negotiations, failing which
the China Trademark Office will decide by the drawing of lots. It
is hoped that this arrangement will effectively deter bad faith
applications and allow adequate time for retailers and wholesalers
in the relevant industries to review and re-consider their
trademark strategies in China.
A generic specification such as "retail or wholesale
services" or any specification which deviates from the
prescribed wording of the aforesaid new services will not be
accepted for registration.
The new services will not be considered similar to the services
of "sales promotion for others" in Sub-Class 3503 or the
relevant pharmaceutical, veterinary, sanitary preparations and
medicinal products covered in Class 5. Hence, existing
registrations in respect of the said goods and/or services will be
unlikely to block future applications for identical or similar
marks in respect of the new services in Class 35.
In light of this latest development, it is high time for
pharmaceutical, veterinary, sanitary product manufacturers and
traders (especially for retailers and wholesalers) to review their
trademark coverage and needs in China and consider whether
trademark filings in respect of the new services are necessary,
whether for actual use or for defensive purposes.
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issues and developments of interest. The foregoing is not a
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