When filing trademarks in China, foreign clients frequently run into problems due to a lack of awareness or understanding of China's good/services trademark classification system - and, more specifically, the system of subclasses within it.
China's subclass system is key to assessing the similarity between goods/services, and can be summarized as follows:
During trademark examination, the China Trademark Office (CTMO) does not assess the similarity of goods/services on a case-by-case basis. Instead, China operates a subclass system within each class as a convenient "short-cut" to determine the similarity of goods/services. Items classified into the same subclass are usually considered similar, while items classified into different subclasses are usually deemed dissimilar despite being in the same class.
It is critically important for foreign clients to understand the subclass system when filing Chinese trademark applications. Armed with an understanding of the best practices, clients will be well-equipped to formulate strategies to overcome most filing hurdles.
This article provides:
- A comprehensive overview of China's subclass system;
- An analysis of the common problems experienced by those who are unfamiliar the subclass system; and
- Tips and best practices in light of the subclass system.
1. Why is there a subclass system?
The subclass system was introduced primarily to increase efficiency. The CTMO is under huge pressure given the large quantity of trademark filings in China, which only continues to grow rapidly each year. In the last three years alone, more than two million trademark applications have been filed.
Because of this, examiners have little capacity to consider the similarity of goods/services in any detail or on a case-by-case basis. The subclass system thus gives a mechanical but quick way of determining the similarity of goods/services. Under this system, examiners usually only need to check boxes indicating whether the goods are in the same subclass. If they are, then they are similar. If not, then they are not similar.
The system does not allow for detailed analysis or argumentation over the nature of various goods/services in determining similarity — at least not during the trademark examination stage.
2. What is the subclass system?
China adheres to the Nice Classification system, which consists of 45 classes of goods/services and is widely used in many Western countries and regions — including the USA, the EU, Australia, and recently Canada. For those familiar with Nice Classification, the Chinese trademark classification system should not be wholly foreign to you.
What is different and difficult, however, is the fact that China further divides each class into subclasses based on similarity of function, raw materials, etc. Some subclasses are evenly divided into different paragraphs. But in general, the subclasses serve as a shortcut for determining the similarity of goods/services as mentioned earlier.
The number of subclasses within different classes varies greatly. There are "small" classes that contain fewer than five subclasses, "medium" classes with around 10 subclasses, and "large" classes comprising approximately 20 subclasses — and, in the biggest case, 54 subclasses. Examples for each category are provided below.
2.1 Small classes
Class 15 has 2 subclasses and Class 32 has 3 subclasses:
Class 15: Musical instruments
||Description of subclass
||Pianos; guitars; violins; etc.
||Musical instruments, accessories and parts
||Music stands; tuning forks; cases for musical instruments; etc.
Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.
||Description of subclass
||Beer; beer-based cocktails; ginger beer; etc.
||Cola; distilled drinking water; fruit juice; etc.
||Syrups and other preparations for making beverages
||Preparations for making beverages; syrups for beverages; etc.
2.2 Medium classes
Class 25 has 13 subclasses and Class 36 has 9 subclasses:
Subclasses for Class 25 are listed below for illustration.
Class 25: Clothing, footwear, headgear
||Description of subclass
||Clothing; coats; jackets [clothing]; etc.
||Babies' textile products
||Babies' pants [underwear]; layettes [clothing]; etc.
||Special sports wear
||Bathing suits / swimsuits; clothing for gymnastics; cyclists' clothing; etc.
||Raincoat; poncho; waterproof clothing; etc.
||Masquerade costumes; theatrical costume/stage costume; etc.
||Shoes for special use
||(This subclass is now merged into subclass 2507)
||Shoes; boots; heels; slippers; etc.
||Hats; caps [headwear]; hoods [clothing]; etc.
||Hosiery; socks; stockings; etc.
||Gloves, not included in special gloves
||Gloves [clothing]; muffs [clothing]; etc.
||Neckties, Scarf, Mantillas, Veils
||Neckties; scarves; bowties; etc.
||Belt, belt [clothing]
||Belts [clothing]; suspenders; girdles; etc.
||Shower caps; etc.
2.3 Large classes
Class 30 has 19 subclasses and Class 09 has 24 subclasses:
Subclasses of Class 30 are listed below for illustration.
Class 30: Coffee, tea, salt… ice, etc.
||Description of subclass
||Coffee, coffee substitutes, cocoa
||Coffee; cocoa; coffee-based beverages; etc.
||Tea and tea substitutes
||Tea; iced-tea; tea-based beverages; etc.
||Sugar; sugar cube; natural sweeteners; etc.
||Chocolate; candy; chewing gum; etc.
||Honey, treacle and non-medical nutrients
||Honey; golden syrup; royal jelly; etc.
||Bread, pastry and confectionery
||Bread; cakes; confectionery / sugar confectionery; etc.
||Pizzas; pancake; fried rice; etc.
||Rice and flour, included multi-com ice cream
||Rice; wheat flour; corn, milled; etc.
||Noodles and rice vermicelli food
||Instant noodle; spaghetti; macaroni; etc.
||Grain puffed food
||Popcorn; rice cake; cereal-based snack food; etc.
||Pulse flour, gluten for food
||Soya flour; etc.
||Tapioca and related products
||Potato flour; starch for food; etc.
||Ice for food, ice products
||Ice, natural or artificial; ice cream; frozen yoghurt; etc.
||Cooking salt; salt for preserving foodstuffs; etc.
||Soy sauces, vinegar
||Soya sauce; vinegar; etc.
||Mustard, monosodium glutamate, sauces, condiments
||Condiments; curry [spice]; mustard; etc.
||Yeast; cooking enzyme; baking soda; etc.
||Flavouring essence, spice
||Aromatic preparations for food; essences for foodstuffs, except etheric essences and essential oils; etc.
||Gluten additives for culinary purposes; etc.
3.What are the common problems caused by the subclass system?
China introduced the unique subclass system for assessing the similarity of goods/services during trademark examination. While the "check-box" approach is designed for efficiency, it leaves no room for a close case-by-case analysis.
This stands in stark contrast to the process in many other countries, where the similarity of goods/services is typically assessed in a more flexible and detailed fashion allowing applicants to rebut the examiner and provide supporting evidence if needed.
These differences in practice in assessing the similarity of goods/services is the root of much of the frustration experienced by foreign applicants in China.
With a view to helping foreign applicants overcome such frustration, below we explore and address six of the most common queries we routinely receive from clients.
3.1 Can I cover the whole class by choosing a class heading as a trademark specification?
A foreign applicant might choose a class heading as trademark specification and assume the whole class is therefore covered. This is not true in Chinese practice.
Firstly, class headings (or subclass headings) are often not acceptable and usually have to be amended to reflect specific goods/services within that class.
Secondly, even if a class heading is accepted for trademark specification, only the items specifically itemized in the text heading itself are covered. In other words, in this context the examiner does not treat the heading as a heading per se, but rather effectively accords it the same weight as a subclass.
For example, the applicant might register its XYZ trademark on "clothing, footwear, headgear," the heading for Class 25, and therefore assume that all 13 subclasses that comprise the class are also covered. In fact, only those subclasses that relate specifically to "clothing, footwear, headgear" are covered — namely subclass 2501-05 (clothing related), 2507 (shoes related) and 2508 (headgear related). It does not cover the other subclasses, such as 2509 (socks related), 2510 (gloves related), 2511 (ties, scarfs, and related items) and 2512 (belts related).
This means that a third party can still register the same XYZ trademark on those uncovered subclasses, because goods in those subclasses are considered dissimilar to "clothing, footwear, headgear" during trademark examination. In other words, the whole class is not covered.
3.2 Why do international registrations (IRs) extended to China usually have a narrower protection scope?
IRs usually provide insufficient coverage of subclasses under Chinese practice, thus leaving gaps in the scope of protection.
This is because IRs are rarely drafted to take into account the Chinese subclass system. The specification for IRs might provide enough protection for the home country (e.g., the USA or Canada), but not for China because not enough subclasses are covered.
Still taking Class 25 for example, an IR specification might read "Coats, T-Shirts, Suits, Skirts, Trousers, Underpants," which may be sufficient to protect the brand on various clothing items in other countries. However, under Chinese practice, those items only belong to subclass 2501, and do not cover items in other subclasses, e.g. baby's clothing (subclass 2502), swimming suits (subclass 2503), raincoats (subclass 2504), etc.
Again, the scope of protection is insufficient in China and there will be gaps of uncovered subclasses, which can potentially leave a brand vulnerable to trademark piracy.
Even if a trademark is not filed in China via IRs, but rather through the normal national application, the same problem can occur for many foreign applicants. This is because the trademark specification is drafted by foreign attorneys who are not aware of or familiar with China's subclass system, and/or local Chinese counsel is not engaged to specifically advise on the subclass issues.
3.3 Can I limit or narrow the scope of goods/services to overcome cited marks in the event of trademark refusal?
When a trademark is refused due to cited marks, many foreign applicants would like to narrow the trademark specification so that the narrowed description of the goods/services would seem dissimilar to that of the cited marks. This is an established practice in many countries but unfortunately not viable in China.
Under China's subclass system, no matter how narrow the revised description of goods/services is, if the trademark remains in the same subclass it is deemed similar to other goods/services in that subclass. For example, the applicant might propose to limit the original goods "nutrition supplements" in subclass 0501 to "nutrition supplements, namely, non-alcoholic beverages containing ingredients to prevent dental disease and cavities," but the narrowed description still belongs to subclass 0501 and thus remains similar to any items in that subclass.
3.4 I don't understand this trademark refusal decision. How can those cited marks, which all look similar, co-exist while my application gets rejected?
Foreign applicants are often puzzled by trademark refusal decisions in China. Quite often, several marks will be cited to refuse an application. Then the applicant fails to understand why those cited marks, which all look similar, can co-exist while their application is rejected.
The subclass system is usually the answer. Those cited marks co-exist because their respective goods/services are categorized in different subclasses; by extension, the trademarks themselves are deemed dissimilar.
It is important that foreign applicants seek local Chinese counsel to explain the refusal decision in terms of subclasses. Specifically, you should ask the local counsel to provide a list of the subclasses covered by your mark, and the subclasses covered by each of the cited marks, in addition to the simple translation of the goods/services of the cited marks.
There is an additional advantage of the subclass approach for reporting trademark refusal decisions, especially if there are quite a few cited marks. For example, the applicant might feel overwhelmed to see that their mark is refused due to as many as six cited marks. How can they overcome so many cited marks in order for their mark to get registered?
However, a closer analysis often reveals that only one or two subclasses are actually key to the applicant, and accordingly there may be only one or two cited marks, out of six cited marks, that actually block those subclasses. Consequently, the applicant may only need to overcome one or two cited marks, not all six cited marks, in order for their mark to be registered in the key subclasses. A more sensible strategy can thus be formulated that focuses on dealing with a smaller number of cited marks, thereby increasing the chances of success and reducing the cost of appeal.
3.5 How does the subclass system affect non-use cancellation of trademarks?
Subclass is usually considered during a non-use cancellation proceeding before the CTMO. This means that demonstrating the use of one item within a subclass can usually maintain the registration for the whole subclass. For example, your mark is registered in class 30 in the "cakes, sandwiches, puddings" subclass. In a trademark non-use cancellation proceeding, you can only show evidence of use with respect to "cakes," but not "sandwiches; puddings." However, showing such evidence can help you maintain the mark on similar goods of "sandwiches; puddings" because they are in the same subclass.
3.6 How does the subclass system affect trademark infringement cases?
Although the subclass system is strictly adhered-to during the trademark examination stage before the CTMO, the Chinese court is willing to assess the similarity of goods/services on a case-by-case basis, and is thus not bound by the subclass system. It is not uncommon in Chinese trademark infringement decisions, for goods/services in different subclasses (e.g. socks and shirts), and sometimes even in different classes (e.g. clothes and eyeglasses), to be deemed similar given the nature of that particular case. Therefore, the subclass system is merely a reference, but not a key factor in trademark infringement proceedings before the court for assessing the similarity of goods/services.
4. How should non-standard goods/services be dealt with during trademark examination?
A related problem to the subclass system is the difficulty of admitting non-standard goods/services into China's trademark specification system. Currently, the CTMO only accepts standard goods/services — namely those items listed under the Nice Classification system, as well as a supplementary list of other acceptable terms issued and updated by CTMO periodically. This is frustrating to many foreign applicants, especially if they are accustomed to drafting detailed trademark specifications tailored to their individual businesses.
The practice related to non-standard goods/services is fluid, and has changed over the years. Before 2014, the CTMO was quite relaxed in accepting applications for non-standard goods/services as long as they were detailed, clear, and commonly used in commerce. During this period, applicants were almost always given second or third chances to present their arguments and amendments in responding to office actions concerning non-standard goods/services.
Between 2014 and 2016, however, the CTMO drastically changed its attitude toward non-standard goods/services. The main reason for this is that the CTMO wanted to clear its docket and speed up the pace of trademark examination, as required by the revised trademark law that came into force in May 2014. Multiple office actions were seen to hinder the docket clearance process. During this period, the CTMO almost always rejected an application straightaway if the applicant tried to admit non-standard goods/services in response to the office action.
Since 2017, there has been a backwards trend toward a somewhat more relaxed approach for non-standard goods/services. There have been cases in which non-standard items have been accepted in response to office actions, especially if the examiner can clearly determine which subclass the non-standard items belong to. However, an examiner still has discretion to reject the application straightaway if non-standard items are not amended to standard ones in response to an office action. Consequently, under current practice it is still advisable to update non-standard goods/serves to standard ones.
The only exception to the problem of non-standard goods/services are international registrations (IRs) extended to China. Although, as mentioned earlier, IRs suffer from insufficient coverage of subclasses, they can be advantageous in that the original trademark specifications contained within them are preserved in China. Thus, IRs remain an important tool in case non-standard goods/services are desired for a Chinese trademark application.
Given the analysis of the common problems described above, we propose the following key takeaways for foreign applicants in light of China's subclass system;
- For your key mark(s), it is advisable to file the mark(s) in China directly, with a specially drafted trademark specification covering all subclasses, or as many relevant subclasses as possible, within each key class. This will provide the broadest scope of protection for your key mark(s) in you key classes, and leave no loopholes for trademark pirates.
- International registrations (IRs) extended to China usually have a narrower scope of protection because the trademark specification is not drafted to take account of China's subclass system. IRs usually leave uncovered subclasses and therefore are often insufficient to protect your key mark(s) in China.
- Simply choosing class headings as your trademark specification will not cover the whole class. The correct way to cover the whole class is to pick at least one item from each of the subclasses within that class.
- International Registrations (IRs) extended to China are an important tool, however, if it is important for you to register a mark with non-standard description of goods/services tailor-made for your business. It remains almost impossible, under current practice, to admit non-standard goods/services in a normal application filed directly in China.
- When receiving a trademark refusal decision that appears to be complicated or does not make sense to you, ask your local Chinese counsel to explain it in terms of subclasses, especially if there are many cited marks. Then, you can identify the key subclass of interest and narrow down the list of actual "blocker" cited marks, which can help you formulate a more focussed appeal strategy with a higher chance of success and lower cost.