"Retail Services" Get a New Lease on Life in Trademark Filings
• Retail Services, as an identification of services, was summarily refused for trademark registrations.
• CNIPA relaxed its practice for some holders accessing China through WIPO filings.
• Amendments of "Retail Services" to those in sub-class 3503 may now be accepted.
The China National Intellectual Property Administration (CNIPA) now accepts amendment of "Retail Services" under WIPO filings in the proceeding of Review on Refusal, so that the some "Retail Services" may be granted with protection in China.
Previously, the CNIPA refused "Retail services" merely on the absolute ground that such services are not acceptable for trademark registration purpose. Retail services had been rejected in China for trademark registration purpose, no matter under WIPO filings or national applications, except for those in relation to pharmaceutical, veterinary and sanitary preparations and medical supplies as expressly listed in CNIPA's guidebook on acceptable goods/services. In addition, the CNIPA had refused to accept, until recently, limitation request for retail services, if the request was filed after the CNIPA issued the decision rejecting the retail services in China.
The CNIPA recently changed their practice, by allowing holders of WIPO filings for the retail services, after the services are refused in China, to file "limitation requests" with the WIPO for amending the retail services simultaneously with filing of Reviews against the Refusals. Under this new practice, the trademark holders may obtain protection for the services after amendment in China in the Review proceedings. This change resulted from the new CNIPA practice on examination of retail services under WIPO filings. Apart from the examination of the absolute ground, the CNIPA shall conduct the relative examination checking whether there exist identical/similar trademarks on services falling in sub-class 3503 such as "sales promotion for others".
The trademark holder may file a MM6 for the "limitation request" before the WIPO, with effect in China only. The acceptable limitations of services are those in sub-class 3503 only, such as
- sales promotion for others;
- marketing; and
- provision of an on-line marketplace for buyers and sellers of goods and services.
The proposed service items are not the same as retail services but are closely relevant. Registering those items should make the trademark holders stand in a more favorable position preventing unauthorized use of the trademarks on retails services.