The China Trade Marks Office (CTMO) recently announced that from 1
January 2013 it is accepting applications to register trade marks
in relation to retail or wholesale services for pharmaceutical,
veterinary and sanitary preparations and medical supplies only in
Prior to this, the CTMO had always rejected trade mark
applications for retail and wholesale services. Brand owners
generally had to rely on registering trade marks under vague
descriptions such as "Intermediary business services relating
to the commercialization of...", to try to obtain trade mark
coverage for their retail or wholesale business in China.
We recommend that brand owners providing retail or wholesale
services in the pharmaceutical or medical industry in China file
new trade mark applications in China in class 35.
New Class 35 Services
The following 7 standard descriptions of services in class 35 will
now be accepted by the CTMO for trade mark registrations:
retail or wholesale services for pharmaceutical, veterinary and
sanitary preparations and medical supplies;
retail or wholesale services for pharmaceuticals;
retail or wholesale services for pharmaceutical
retail or wholesale services for sanitary preparations;
retail or wholesale services for medical supplies;
retail or wholesale services for veterinary medicines; and
retail or wholesale services for veterinary preparations.
The above retail or wholesale services can be provided online or
through physical stores. The services also include the services
provided around the actual sale of goods, not just the act of
The new class 35 services will not be considered to be similar
to any service in class 35 that is currently acceptable for trade
mark registration by the CTMO. Therefore any previous application
or registration in class 35 will not be given priority over a new
application covering the new class 35 services.
The transitional period is from 1 January 2013 to 31 January
All trade mark applications filed for registration in relation
to the new class 35 services within this period will be considered
as having been filed on the same day.
If two conflicting trade mark applications are filed on the
same day, the CTMO will preliminarily approve the application for
the trade mark that was used first before 1 January 2013. The use
(presumably in China) must be genuine use in relation to the
specified class 35 services made available to the public.
If the date of first use is the same for two or more trade
marks and neither mark has been used, it is up to the applicants to
negotiate an agreement. If no agreement can be reached, the
applicants will draw lots.
Brand owners are required to submit a business certificate
demonstrating that the new class 35 services fall within the scope
of their business. If a business certificate is not supplied, then
the application will be rejected.
If the scope of the business certificate is not completely
consistent with the new class 35 services that the brand owner is
applying for, the CTMO will accept the application and notify the
brand owner and ask that the application be amended. While the CTMO
has not provided any further guidelines around this, we expect that
the CTMO will allow the brand owner further time to amend its
business certificate without losing the filing date.
Once the transitional period ends on 31 January 2013, the CTMO
will revert back to its usual practice of granting trade mark
rights priority to the "first to file".
In light of the new class 35 services, we recommend that medical
and pharmaceutical companies, that have a retail or wholesale
business in China, file applications to register their trade marks
in China for the new class 35 services during the transitional
period which ends on 31 January 2013. Even if your business has not
commenced use of its relevant trade marks in relation to these
services in China, we recommend that a trade mark application be
filed for these services as a defence against bad faith
applications, especially in the case of well known international
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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