China Trademark Office clarifies classification of similar goods and services

In order to add more clarity to the cataloging of goods, the China Trademark Office published a document which explains the Chinese version of the Classification of Goods and Services and helps determine their similarity.

Last December, the China National Intellectual Property Administration (CNIPA) issued the Guidance on the Correct Understanding of Classification of Goods and Services for the Purposes of Trademark Registration.

This document clarifies the purpose and function of the official classification of similar goods and services by the CNIPA and how it determines similar goods and services in examination procedures.

The Chinese version of the Classification of Goods and Services (the classification book) is based on the Nice Classification, and it adds the names of goods and services commonly used in China. The Nice Classification (NCL), established by the Nice

Agreement (1957), is an international classification of goods and services applied for the registration of marks.

Administrative and judicial authorities use the classification book in trademark cases as a reference to determine the similarity of goods and services.

The following rules apply to the classification book and are used to decide the resemblance of goods and services in different circumstances. 

Subclasses in the classification book

The subclass system is an important reference in judging whether goods/services are similar. In most cases, goods and services falling into the same subclasses are considered similar, while those in different subclasses are not.

In certain cases, not all goods or services in the same subclass constitute similar goods/services. The Classification book further divides them into different parts according to the relations between goods/services.

In general, goods/services in the same parts are similar, while for those that are not in the same parts, their similarity should be judged according to the explanations in the annotations.

An example of this is subclass "1703 Rubber, resin, and fiber products", where goods are divided into four parts, and it is indicated in the annotation that the goods in different parts are not similar. 

For goods/services listed in other subclasses, their similarity should be decided according to the explanations in the annotations.

Similarity of goods and services not listed in classification book

The general understanding of the relevant public and the function, usage, main raw materials, production sector, target consumers, sales channels and other factors can be used in the evaluation of similarity of goods/services not included in the classification book. The purpose, content, mode, object, and place can be the base for the assessment to determine similarity of services. 

In trademark opposition, review of opposition or invalidation cases, the classification book is used as an important reference, while the relevant rules in the Trademark Examination Review Guidelines should be considered. Similarity is determined on a case-by-case basis.

The theory of likelihood of confusion is applied to determine similarity for goods and services not covered by the classification book, but with certain relevance. 

Previously, the CNIPA had issued the Guidance on Trademark Registration and Use on Services in Class 35 to enable relevant entities to correctly understand the connotation and denotation for services in this class, and to file trademark applications properly.

Services in class 35 under the Classification of Similar Goods and Services include business management services, operation, organization, and administration, as well as advertising, marketing and sales promotion services conducted by commercial or industrial enterprises. The sales of goods per se are not considered as services and the relevant services in class 35 are provided for others.

The Guidance provided explanations for 11 groups of services in class 35. 

It is important to designate the proper goods and services according to the actual needs of use in the market, to obtain sufficient protection after

registration, according to the Guidance. In principle, the goods in use should be the same as the registered ones.

In recent years, the CNIPA has become increasingly stricter in trademark examination on absolute grounds, with two major refusal grounds being non-distinctiveness and misleading issues.

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