China: Registrability Of Retail And Wholesale Services In China

For a long time, "retailing" and "wholesaling" are not registrable under the Nice Classification (NCL). The rationale behind this is that "retailing" and "wholesaling" have been considered as ancillaries to the sale of goods and do not constitute services for the benefit of others, and thus not protectable.

Over the years, however, more and more countries are opening their doors for "retailing" and "wholesaling" services.

In the EU, the 2008 CJEU Decision in the Praktiker Case paved the way for registering the retailing of goods. The 2014 Netto Marken Decision even allowed the acceptance of retailing of services.

In Japan, retail and wholesale services became registrable in 2007.

In China, in 2013, the former China Trademark Office (CTMO, which has been renamed to CNIPA) opened a crack only wide enough to allow retail and wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies.

The latest Nice Classification (the NCL11-2020 edition) provides limited items of retail and wholesale services, which includes: 

Besides, an explanatory note also suggests that Class 35 includes, in particular, "the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through vending machines, mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes".

Although the Chinese Classification does include the above explanatory note, it differs from the Nice Classification by precluding the items in bold of the above list and it also added a few items relating to retailing or wholesaling for pharmaceutical, veterinary and sanitary preparations and medical supplies.

In its current practice, the CNIPA does not accept a generic expression of "retail"  or "wholesale" services, nor does it accept retail or wholesale services for specific goods except for those mentioned above,

For international registrations designating China, "retail" and "wholesale"  are the two sensitive words that will easily trigger a refusal. Unless the wording limits the services to the scope of pharmaceutical, veterinary and sanitary preparations and medical supplies, a refusal is inevitable and an appeal is hopeless.

So, what to do under this circumstance?

We advise clients in this situation not to fight hopeless reviews, but to have practical approach to the problem: filing a national trademark registration application covering all sub-classes in Class 35. If the new application is granted, their trademark will enjoy maximum protection in Class 35 from possible infringement.

Despite the CNIPA's current stance against retail and wholesale services, there are signs that it will gradually shift and become more in line with the international practice. By then, owners of Class 35 trademarks can choose to expand coverage to new service items based on their scope of business.

The article was originally published on HFG Law&Intellectual Property website: http://www.hfgip.com/news/registrability-retail-and-wholesale-services-china

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.