Tuesday, 5th February, 2013

Selling goods in China is now a little easier

From 1 January 2013, the Chinese Trade Marks Office will accept trade mark applications covering 'retail or wholesale services' for certain goods.  Until now, it has not been possible to register a trade mark for 'retail or wholesale services' in China.  

This is a great development for some businesses wanting to register their trade marks in China for such services. Although the list of goods that can be retailed or wholesaled in China is somewhat limited, hopefully more categories will be added to the list over time.

What services can you now register?

It is now possible to register trade marks in China for retail or wholesale services for:

  • pharmaceutical, veterinary and hygienic preparations and medical supplies
  • pharmaceutical purposes
  • medical preparations
  •  hygienic preparations
  • medical supplies
  • veterinary medicines
  • veterinary preparations.

A registration covering 'retail or wholesale services' would provide coverage for all forms of selling those goods in China. This includes traditional brick-and-mortar retail shops and sales platforms such as the internet.

It is still not possible to register a trade mark for the broad description 'retail or wholesale services' alone or for goods not listed above.  While this is somewhat disappointing given the limited range of goods that can be covered by a trade mark registration, it is hoped that the Chinese Trade Marks Office will review and add to the list of acceptable goods on a regular basis.  In a significant number of countries where trade mark registrations can be obtained, it is possible to cover 'retail and wholesale services' either alone or for a wide variety of goods.  This move by the Chinese Trade Marks Office is a step in the right direction and will assist in aligning China with the rest of the world.

Transitional period

There is a transitional period of 1 to 31 January 2013 for the filing of new trade mark applications in China for this new category of services.  Any applications filed during this period will be deemed filed on 1 January 2013. 

Reviewing your Chinese trade mark portfolios

It is important for some manufacturers to review their trade mark portfolios. Businesses manufacturing goods like medical supplies, sanitary, pharmaceutical and veterinary preparations, should take a close look at their trade mark protection in China to satisfy themselves that they are adequately protected.  As a minimum, trade mark protection should be sought for the trade mark used on the goods themselves.  Consideration should also be given to registering the translation and transliteration of the trade mark. 

Also, with the introduction of a 'retail or wholesale' services category, consideration should be given to also covering such services in China. This is because a registration covering the goods (medical supplies, sanitary, pharmaceutical and veterinary preparations) does not prevent another business from registering the same trade mark for the 'retail or wholesale' of those goods.

The Chinese Trade Marks Office has stated that it considers as dissimilar a trade mark covering goods which are the subject of a retail or wholesale services registration for the same trade mark, and will not cite the goods registration as a bar to registration of the services trade mark.

This could have the result of two different, unrelated businesses owning the same trade mark - one for 'medical supplies' and the other for the 'retail or wholesale of medical supplies'.  If the manufacturer of the 'medical supplies' wants to ensure that they retain the ability to retail or wholesale their own goods under their own trade mark, then a registration for 'retail or wholesale services' needs to be obtained - and promptly!

The last word

China as a market is developing fast.  Over the last decade we have seen a substantial increase in the number of laws passed, designed to align and harmonise China with the rest of the world.  Trade mark law and practice is no exception.

When doing business in China, you need to keep an eye on the market, to ensure that you are not caught out by the fluidity of it. There will be a lot of change in China in the coming years that you need to keep up-to-date with.  Taking steps now to protect your trade mark is one step that could give you stability and peace of mind as this country develops around you.

 An edited version of this article was published in NZRetail magazine, issue 714.