[Author: Nan Wang]
A trademark applicant should carefully declare the designated goods/services based on its current scope of business and the future development strategy in order to obtain the maximum legal protection for the future brand promotion and right enforcement. In this article, the author, based on her own practical experience, summarizes the key considerations for selecting goods/services in trademark application, hoping to be helpful for trademark applicants in brand planning.
The China Trademark Office formulates The Classification for Similar Goods and Services (hereinafter referred to as “The Classification” shown below) by dividing the goods and services in each class of Nice Classification into subclasses and groups and adding the names of commonly used goods and services in China according to the actual situation for the reference and use of the applicant to apply for trademark registration. The first step in declaring goods / services in a trademark application is to determine the class(es) of goods / services to be designated (the category the goods / services fall into), and then to specify the goods / services within each class. How does a trademark applicant make a sensible selection of the classes of goods / services and designate specific goods / services based on their own needs? The author provides the following suggestions for reference.
For the selection of the classes in trademark application, i.e. the category the goods/services fall into, it can be classified into four levels, namely, core class (main goods and services), closely related class (goods and services in the same industry chain), related class (confusing goods and services), and defensive class (possible future expansion, anti-squatting considerations, etc.), based on the trademark applicant's industry (such as clothing, cosmetics, food, medical devices, etc.), current business scope (goods produced and sold, services provided) as well as future development strategy (possible expansion of goods and services).
Take "children's phone watch" as an example. Since it has multiple functions such as telephone, watch, positioning, photo, photography, game, etc., when choosing a class, the primary function (telephone) determines its core class, the secondary function (watch) determines the closely related class, and the special functions determine the related and defensive class. In particular, the table below displays the classes of goods and services that may typically be included.
In order to seek the most practical protection, it is generally required to do a comprehensive analysis of the enterprise's size and strength, brand positioning, and other relevant factors. For example, if the applicant is a cross-field comprehensive enterprise with strong competence and broad business scope, despite that the applied trademark intends to be used only on “children's phone watch”, if it is the enterprise's competitive product and it plans to invest heavily in its promotion in the short term, it is suggested to have as broad scope as possible to prevent the pervasive malicious squatting. In contrary, if the trademark applicant is a small and medium-sized enterprise (SME) with limited brand promotion budget, and under the uncertainty of product development prospects, it is advised to consider registering the trademarks step by step. Before the goods are formally put on the market, it is advisable to apply first in the core class 9 and class 14 to ensure the safe use of the trademark and to avoid infringing on the trademark rights of others. Depending on the development of the brand, the scope of application can be gradually expanded over time to maximize cost-effectiveness.
After determining the class(es) in which the trademark is to be applied, i.e., the category the involved goods and services fall in, the next step is to designate specific goods/services. The scope of goods/services is not the same even in one single class. At this stage, the applicant can also refer to the aforementioned four-level step-by-step selection method in the same class to appropriately expand goods/services in order to obtain broader rights protection. In particular, according to the current fee standard in China, the application fee remains the same when designating goods/services no more than 10 items in one class. Therefore, when it is still less than 10 items after selecting all the desired designated goods/services, it is advised to adopt the above mentioned four-level step-by-step protection method to add related goods/services. Specifically, the selection can be done in three steps as follows.
The first step is to select the goods/services that are consistent with the products actually manufactured and sold so as to ensure the safe use of the trademark of the main product in the future to the greatest extent possible, and also to serve as the use evidence in trademark non-use cancellation to maintain the validity of trademark rights and to claim the exclusive trademark rights in infringement cases.
In the second step, on the basis of the first step, in order to exclude the registration of identical or similar trademarks on similar and related goods by others as much as possible, it is suggested to consider further selecting the goods/services with wider scope in the same subclass or group, and the goods/services that have cross-class similarity relationship or are entitled to cross-class search protection. However, please note that the goods/services with a wider range of rights are more likely to face obstacles in registration as compared to those with a single range of rights. Therefore, to avoid rejection and obtain the publication of preliminary approval, applicants should pay special attention to making sensible selection of designated goods/services based on their actual situation.
In the third step, after selecting the actually desired goods/services, it is suggested that the trademark applicants should not be bound by the number of items of goods/services. It is advisable to select one more broader goods/service in each of the subclass or group covering similar goods in the Classification in order to expand the protection scope of its trademark registration as much as possible .There are exceptions for certain subclasses that more than one item of goods may need to be selected, which requires special attention in individual cases.
When declaring the goods/services, trademark applicants can determine the expression of goods/services by themselves. But in practice, it is preferred to choose from the goods/services included in the Classification. This is because the goods/services listed in the Classification are officially acceptable expressions, which can avoid the risk of being requested to make modification due to non-standard expressions of goods/services. Once the notification of modification is issued in trademark application, the progress of application will be delayed by responding to the notification of modification (the time limit for response to the modification is 1 month as specified by law). Therefore, for trademark applicants who are eagerly to obtain their rights, the better strategy is to select the goods/services in the Classification.
When the goods that are actually produced and sold and services that are actually provided are not included in the Classification, if the goods / services are of importance, it is recommended to declare the goods in the expressions that are clear in the scope of protection (to determine the subclass of that goods according to its expression) as much as possible by referring to the standard expression of goods / services in the Classification. If the application involves emerging goods or services, it is recommended to include explanatory materials of the goods or services, which some examiners may take into account.
If the trademark applicant does not stick to the non-standard goods / services, or has received a notification of modification, if the expression still fails to meet the requirements after modification, there would be risk of being rejected. At this stage, it is recommended to modify the goods to the standard ones in the Classification that can cover the scope of such goods / services. But noteworthy point is that some non-standard goods / services may involve more than one subclass, in such case, it is advisable to select broader goods/services in all the potential subclasses. If there is no broader goods/services in the subclass, it is advisable to select the goods with similar functions and services with similar service contents to obtain trademark rights in the scope of all the potential subclasses to cover the non- standard goods/services, so as to achieve the purpose of not infringing others' trademark rights when using the relevant trademark on the non-standard goods/services in practice.
In summary, the selection of the designated goods/services in the trademark application is an important part of the enterprise branding strategy and the "foundation" of the trademark right. The trademark applicant should make the selection carefully to safeguard their brand.
