According to Nice Classification, Class 35 includes mainly services, such as business management, operation, organization, and administration of a commercial or industrial enterprise, as well as advertising, marketing and promotional services.
In China, Class 35 is usually nick-named as "all-purpose class". Given the requirements from online e-commerce platform or physical shopping mall or defensive purpose, many companies have additionally registered the mark in Class 35. According to the trademark annual report, the number of trademark applications in Class 35 are always at the top of the filing list.
In practice, the lack of appropriate understanding on services mark in Class 35 might be one of cause of the "pollution" in class 35. Also doubts persist when it comes to the trademark infringement or trademark administrative cases, such as non-use cancellation action.
Last December, the China National Intellectual Property Administration ("CNIPA") published a new Guideline on the Application and Use for Service Trademark in Class 35 ("Guideline"), further explaining how to understand and use the service mark in Class 35 from an official perspective.
Herein we would like to to highlight some key points:
Characteristic of Class 35
The Guideline emphasize that "the relevant services in Class 35 are provided for others, rather than for the right holder's own business needs".
As a consequence, we shall imply that the selling of the goods with the brand of the trademark owner shall not be covered by class 35. Similarly, we shall conclude for the "advertisement": class 35 shall not include the making of the own advertising, but only the advertising for others.
Use of Trademark in Class 35
Considering the special feature of Class 35, the Guideline also provides the interpretation on how to use such service mark properly.
First, the Guideline explains that the use of trademark on signboard is for the purpose of selling own goods shall not be regarded as use of the services in Class 35 like "promotion for others".
In this regard, when it comes to trademark infringement cases, even if the infringer defends that its use is legitimate since it is the "proper" use of its registered trademark in Class 35 covering "promotion for others", such defense may not be upheld anymore. Therefore such use shall constitute an infringement against other's registered trademark or unfair competition to a large extend, because such use for trademark in Class 35 is not the situation of "proper" use.
Second, the Guideline emphasizes that in the process of marketing, some behavior may have the nature of "commercial" and "management". However, the owner of trademark in Class 35 cannot prohibit these market players from conducting marketing due to the existence of aforesaid nature.
We would consider such rule expressed in the Guideline were already largely practice in judicial procedures by the Court, however it is the first time this rule being expressly confirmed at administrative level, which is surely supportive for the right holders to defense and argue in the future cases.
How to maintain the Services Trademark in Class 35
The Guideline also provides some suggestions on how to collect the evidence to prove the use of the service trademark in Class 35, which will be considered especially when the mark is attacked by non-use cancelation action in China.
1. Preserving the service contract with corresponding invoices or similar ones to prove the performance of the contract, which shall clearly indicate trademark, registration number, service content, amount, execution time, etc.
2. Preserving the promotional evidence for the use of service trademark through different channel including Radio, TV, Newspaper, Magazine, Internet etc.
3. Marking the service trademark in the service place, such as on signboard, interior decoration, service manual, price list, menu, stationery, etc. and contract and invoice for the design of these products.
4. If there are multiple trademarks in the same Class and the distinctive of them are different, please note to distinguish the use by the possible way of adding ® in the upper right corner of the registered trademark.
5. If the trademark owner cannot put the service trademark into use due to force majeure, governmental restrictions, bankruptcy, and liquidation, etc., it is better to prepare relevant defense evidence.
Note: If you would like to explore more for the goods and services classification rules in China, it is suggested to use X-CLASS (see here) for a bilingual online IP tool to navigate the Chinese (Sub-) Classification of goods and services.
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.