What is Nice classification?
When applying to register a trade mark, Applicants need to detail the goods or services in respect of which they (intend to) use their mark. The Nice classification is an international system of classifying those goods/services into the appropriate class(es), for the purposes of fee payment and availability searching.
China is one of 80 countries worldwide which uses the Nice classification. However, there are significant differences in the way it uses the system compared with most other territories. This blog briefly explores some of those.
Subclasses and standard terms
China divides each Nice class into subclasses. Goods/services are therefore grouped into both a Nice class and an underlying subclass (9.1, 9.2 etc). In addition, only standard descriptions of goods/services, already approved by the Chinese Office, are accepted.
Goods/services within the same subclass are automatically regarded as similar. Similarity is also presupposed between a number of different subclasses.
This mechanical approach avoids case-by-case analysis of the goods/services themselves. Similar earlier marks are cited against applications based on predetermined similarity between subclasses, rather than an analysis of the goods/services themselves (in contrast to the UK/EU position for example).
Filing in China
Selecting only standard terms to describe goods/services can be frustrating for Applicants and the wording can give the impression the right does not actually cover what the Applicant wants it to. For example, the standard term "financial sponsorship" (class 36.02) may have to suffice as a replacement for "providing educational scholarships" which itself is not a recognised term.
In addition, the lack of case-by-case analysis can also result in earlier marks covering seemingly different goods being raised as an obstacle to registration.
Key Takeaways
Here are some important considerations when filing:
- Coverage of the most relevant subclasses is of principle importance, rather than the description of goods/services themselves. The application may therefore contain goods/services which the Applicant does not strictly provide.
- Identifying and focusing on the Applicant's key subclasses will help avoid receiving an extensive range of earlier marks being cited against an application.
- International Registrations which designate China can be a useful tool for avoiding the need to use standard terms. However, if China's subclass system has not been considered when drafting the original application, the Chinese registration's scope of protection may be narrow.
A trade mark application should be drafted specifically for China to ensure minimal objections and to ensure that, ultimately, robust protection is obtained. It is important to seek input from local counsel. Haseltine Lake Kempner's close relationship with a number of attorney firms in China can assist you in securing protection for your trade marks.
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.