International Registrations and Narrower Protection Scope
A notable concern for foreign companies entering the Chinese market is that international trademark registrations extended to China may have a narrower protection scope. This is primarily because the subclass system in China can result in limitations to the protection offered to a trademark registered under the Madrid Protocol or other international agreements.
The international registration system typically relies on the Nice Classification System, which is a broader approach to trademark classification. However, as mentioned earlier, China employs a subclass system that further divides these classes into more specific categories. Consequently, when an international registration is extended to China, it may only cover a limited number of subclasses instead of the entire class.
For example, a company with an international trademark registration for clothing in Class 25 might assume that their trademark is protected for all types of clothing in China. However, due to the subclass system, the protection might only extend to a few subclasses within Class 25, such as 2501 for clothing and not 2502 for footwear or 2503 for headgear. This narrower protection scope could leave the company’s brand vulnerable in the Chinese market.
To avoid such issues and ensure comprehensive protection, foreign companies should thoroughly examine the scope of protection their international trademark registration affords in China. In many cases, it may be necessary to file additional applications to cover relevant subclasses, thereby strengthening their trademark protection in the Chinese market.
Examples of Subclasses Where There Often Is Confusion
As we have already pointed out, the trademark classification in China follows the Nice Classification system. The Nice Classification system divides goods and services into 45 classes, with classes 1-34 for goods and classes 35-45 for services. Each class is further divided into subclasses to provide more specificity. These subclasses are specific for China.
Confusion may arise in some subclasses where the categories overlap or are not clearly defined. Here are a few examples of such instances:
- Class 9, Subclasses 0901 and 0906:
- 0901: Computer hardware and peripheral devices
- 0906: Computer software, recorded There can be confusion regarding the distinction between hardware and software, as some products may be a combination of both.
- Class 14, Subclasses 1402 and 1403:
- 1402: Precious metals and their alloys
- 1403: Jewellery, precious stones There might be confusion when it comes to products made of precious metals and those that incorporate precious stones or are considered jewelry.
- Class 25, Subclasses 2501 and 2508:
- 2501: Clothing
- 2508: Footwear Some products, such as socks, may be considered both clothing and footwear, creating confusion between these subclasses.
- Class 29, Subclasses 2901 and 2905:
- 2901: Meat, fish, poultry, and game
- 2905: Processed fruits, vegetables, and nuts The confusion arises when dealing with processed food products that include a mix of ingredients from these two subclasses.
- Class 35, Subclasses 3501 and 3506:
- 3501: Advertising
- 3506: Business management, administration, and office functions. The confusion may arise when a service involves both advertising and business management aspects.
Understanding these potential areas of confusion can help you classify your trademark in China more accurately and avoid potential issues during the registration process. It is always advisable to consult with a trademark attorney or agent to ensure your trademark application is correctly filed.
Common Issues Encountered
Similar Trademarks in Different Subclasses
One common issue that arises with the subclass system is the possibility of similar or even identical trademarks being registered in different subclasses. This can lead to confusion among consumers and potential conflicts between trademark owners.
Non-distinctive Trademarks
Another issue encountered in the subclass system is the registration of non-distinctive trademarks. Some businesses might attempt to register generic or descriptive trademarks that lack distinctiveness, making it difficult for consumers to differentiate between products and services.
Trademark Squatting
Trademark squatting is a prevalent problem in China, where individuals or entities register trademarks belonging to foreign companies in an attempt to profit from the brand’s reputation. Due to the subclass system, trademark squatters can register similar or identical trademarks in different subclasses, causing significant issues for legitimate trademark owners.
Protecting Your Trademark in China
Monitoring Your Trademark
To safeguard your brand in China, it’s essential to monitor your trademark regularly. Keep an eye on the market for potential infringements and monitor the Chinese Trademark Office’s database for any new applications that may conflict with your trademark.
Taking Legal Action
You may need to take legal action if you discover infringement or a conflicting trademark application. Consult with a local attorney experienced in Chinese trademark law to discuss your options and pursue the appropriate course of action. Legal options may include filing an opposition against the conflicting trademark application, initiating administrative actions, or pursuing litigation to protect your brand.
Conclusion
Understanding China’s trademark subclass system is crucial for foreign companies looking to enter the Chinese market. The subclass system offers more precise protection but can also lead to confusion and a narrower scope of protection for international registrations. To ensure comprehensive trademark protection, companies should be familiar with the subclass system, monitor their trademarks, and take legal action when necessary to defend their brand.
FAQs
- What is the main difference between the Nice Classification System and China’s subclass system? The Nice Classification System is an international system that divides goods and services into 45 classes. In contrast, China’s subclass system further divides these classes into more specific categories for better trademark protection.
- Why is the subclass system essential for trademark protection in China? The subclass system offers more precise protection for specific goods or services, reduces the likelihood of similar trademarks being registered in related subclasses, and enhances enforcement against trademark infringement.
- How can a foreign company ensure comprehensive trademark protection in China? Foreign companies should conduct thorough research on the scope of protection their international trademark registration offers in China, file additional applications to cover relevant subclasses if necessary, and monitor their trademarks for potential infringements.
- What are some common issues encountered in the subclass system? Some common issues include similar trademarks in different subclasses, non-distinctive trademarks, and trademark squatting.
- What legal options are available for protecting trademarks in China? Legal options for protecting trademarks in China include filing oppositions against conflicting trademark applications, initiating administrative actions, and pursuing litigation.
Contact us if you need help with background investigation of Chinese companies, protecting patents, trademarks, verification of contracts to the law in China, or help with other legal challenges that you have in China.
If you require our assistance or have further questions about our services, please do not hesitate to contact our Customer Relationship Manager, Jan Erik Christensen, at janerik@ncbhub.com. We look forward to hearing from you and helping your business succeed in China.
