Subclasses, “Standard Goods”, 40,000 Characters, and other Peculiar Issues to Remember when Conducting Trademark Searches in the PRC

SUBCLASSES, “STANDARD GOODS”, 40,000 CHARACTERS,

AND OTHER PECULIAR ISSUES TO REMEMBER

WHEN CONDUCTING

TRADEMARK SEARCHES IN THE PRC

Another Quality

Arm & Hatchet

Production

By

Paul Schmidt 舒明德


The Epidemic of Bad-FaithTargets are Well-Known in China


The Epidemic of Bad-FaithTargets are not Well-Known in China


The Epidemic of Bad-FaithSome “Brands” Become Overwhelmed – Jackie Chan


The Epidemic of Bad-FaithThe Defensive Registration Response – Yao Ming


Take Away:

• Remember Yao Ming

• Broad defensive filings are

recommended, and thus also, at times,

broad defensive searches

How many trademark classes are

there in the PRC?


Practicallyspeaking

PRC subclasses and “standard goods”


Catalogue of Goods

and Services

The 506 subclasses

“Standard goods

and services”



Highly Formalistic

“Clothing” (2501)

Not included:

− Socks (2509)

− Gloves (2510)

− Ties (2511)



Very Slowly Evolving

“MP3 Player” not

included for years

- substitute

standard good:

“juke box”

“On-line social

network service”

added Jan. 1, 2014


Take Aways: • If you have a relatively new and innovative product:

– Make sure your PRC search counsel has designated the

appropriate PRC subclasses in order to make sure you

are looking in the most relevant areas of the PRC

trademark register.

– The PRC Trademark Office will probably reject it as

“non-standard” and you will need to work closely with

your PRC counsel to make sure you have claimed

appropriate “standard goods” in appropriate PRC

subclasses in order to obtain the kind of protection

desired.

• If you have a Class 1 product . . . . please call me.

• The English/Chinese

interchangeability problem

Chinese Language Issues


Take Aways:

Searches need to be run in both English and Chinese

Registrations need to be made in both English and Chinese

• The 40,000 character problem



蝌蝌齦蠟 - Kē Kē Kėn Là

可口可乐 - Kė Kou Kė Lè

- "bite the wax tadpole”

- "happy mouth drink"

• The 40,000 character problem



Take Away:

Don’t bite the wax tadpole

Translating into Chinese is hard. Often numerous

translations are possible. PRC counsel often need extra

time in devising two or more suitable translations – all of

which should be searched.



The speed of counterfeiting problem

The speed of counterfeiting problem



Take Away:

The PRC is a first to file jurisdiction - with no intent-to-use

requirement - and with very high levels of counterfeiting.

One has to move very fast – especially with respect to

Chinese language marks.

• “Liberal" use of socialist morality rejections

(社会主义)

Peculiar Rejections


Rejected:


(社会主义)

Peculiar Rejections


Accepted:


(社会主义)

Peculiar Rejections


Strategy:

Faced with a socialist morality rejection, consider

reapplying with a "cartoonish" figure to get on the

register, but go ahead and use the "edgy" mark.

• Overuse of “Purely Descriptive” or “Non-

distinctive” rejections

Peculiar Rejections


Strategy:

This rejection problem often stems from poor

translation work done by certain individual

examiners. The rejections are usually overcome fairly

easily on appeal provided review examiners are

provided good translations from authoritative

dictionaries.

PRC Examiners – Who are they?


Most are young –

hired directly out of

law school

One to three months

of on-the-job

training

Relatively high rate

of turnover

PRC Examiners – Total Number?


Difficult number to

calculate

Best estimates are

between 300 to 500

in any given year

PRC Examiners

– Applications handled per examiner?


2012 – 1,414,113 applications processed

Assuming 500 examiners

2,828 applications per examiner

12 applications per day, per examiner


Law

Subclasses, “Standard Goods”, 40,000 Characters, and other Peculiar Issues to Remember when Conducting Trademark Searches in the PRC