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China Trade Marks Inclusion of Retail and Wholesale Services Relating to Medicines and Pharmaceuticals

Q: Does China Trademark Office accept the trademark application for retail and wholesale?

A: Before 1 January 2013, such applications are always rejected by the China Trademark Office.  But recently, the China Trademarks Office (CTMO) announced that from 1 January 2013 it is accepting applications to register trademarks in relation to retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies only in class 35.

Q: What kinds of specific service descriptions may be accepted by the CTMO?

Currently, not all retain and wholesales services may be accepted.  Only the following 7 standard descriptions of services in class 35 will be accepted by the CTMO for trademark registrations: 1. retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; 2. retail or wholesale services for pharmaceuticals; 3. retail or wholesale services for pharmaceutical preparations; 4. retail or wholesale services for sanitary preparations; 5. retail or wholesale services for medical supplies; 6. retail or wholesale services for veterinary medicines; and 7. retail or wholesale services for veterinary preparationsThe above retail or wholesale services can be provided online or through physical stores. The services also include the services provided around the actual sale of goods, not just the act of selling goods.

Q: Any of the newly acceptable retail and wholesale services in Class 35 is judged as similar to the currently acceptable services in Class 35?

A: The new class 35 services will not be considered to be similar to any service in class 35 that is currently acceptable for trade mark registration by the CTMO. Therefore any previous application or registration in class 35 will not be given priority over a new application covering the new class 35 services.

Q: Are there any transitional period and provisions since this is a new thing?

A: The transitional period is from January 1 till January 31, 2013.  All trademark applications filed for registration in relation to the new class 35 services during the transitional period are considered as having been filed on the same day. 

Q: How to deal two conflicting trademark applications which are filed on the same day?

A: The CTMO will preliminarily approve the application for the trade mark that was used first before 1 January 2013. The use (presumably in China) must be genuine use in relation to the specified class 35 services made available to the public.  If the date of first use is the same for two or more trademarks and neither mark has been used, it is up to the applicants to negotiate an agreement. If no agreement can be reached, the applicants will draw lots.

Q: How does the CTMO decide the trademark ownership after the transitional period? 

A: Once the transitional period ends on 31 January 2013, the CTMO will revert back to its usual practice of granting trade mark rights priority to the "first to file".

Q: What is the recommendation from Lehman,Lee & Xu?

A: In light of the new class 35 services, we recommend that medical and pharmaceutical companies, that have a retail or wholesale business in China, file applications to register their trademarks in China for the new class 35 services as soon as possible. Even if your business has not commenced use of its relevant trade marks in relation to these services in China, we recommend that a trade mark application be filed for these services as a defence against bad faith applications, especially in the case of well known international brands.

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