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Trademark practice - Meeting CNIPA requirements: IR extension in China

Joan SU | May 28, 2021

The China National Intellectual Property Administration (CNIPA) currently abides by the 11th edition of the Nice Classification of Goods and Services (Nice Classification) and a standard classification manual containing Chinese descriptions of goods and services (Chinese Classification Manual). Accordingly, the CNIPA generally accepts descriptions of goods/services that comply with Nice Classification or the Chinese Classification Manual. Conversely, the CNIPA may or may not accept descriptions that do not comply (so-called non-standard descriptions).

Considering that certain non-standard descriptions are acceptable for WIPO International Registrations (IRs), the examination standard of the CNIPA for IRs regarding the description of goods/services is relatively more lenient than that of direct filings. Because examiners often exercise their own discretion when accepting non-standard descriptions covered by IRs, a number of these cases are not accepted. Some common refusal cases and related suggestions are listed below.

Class

Common refusal

Suggestions

Class 5

The term “pharmaceuticals” is not acceptable in China. It must be clarified if they are for human or veterinary use.

Limit "Pharmaceutical" to "pharmaceuticals for human use" and/or "pharmaceuticals for veterinary use", "Medicines for human purposes" and/or "Medicines for veterinary purposes".

Class 9

The term “Smart glasses” is not acceptable in China because the wording is not clear enough to be properly classified. To remain in Class 9, the term may be reworded to “smart glasses (data processing)”.

Limit "Smart glasses" to "Smart glasses (data processing)".

Class 35

Retail, wholesale and related services are not acceptable in China.

CNIPA generally does not accept descriptions for retail services except those for pharmaceutical, veterinary, sanitary preparations, and medical supplies.

We would advise replacing them with terms such as "marketing", "sales promotion for others", "import-export agency services", "provision of an online marketplace for buyers and sellers of medicines". Such descriptions are considered to be the closest equivalent of retail and wholesale services in China.

This approach is useful during the entering stage or subsequent designating stage (i.e. when an IR extends to China). However, it may not be as helpful during the refusal review stage, in which such amendments could be considered as exceeding the original scope.

When IRs extend to China, we would recommend:

1.Only using standard descriptions or editing the descriptions according to Nice Classification or the Chinese Classification Manual. This practice will allow one to avoid refusals due to non-standard descriptions.

2.If a brand owner intends to cover non-standard descriptions, it is advisable to also include standard descriptions that are general enough to cover the non-standard ones. This way, the applicant would be more comfortable deleting the refused non-standard descriptions or amending them to standard ones.

3.When an IR Chinese extension is provisionally refused due to non-standard descriptions, the applicant may consider filing an IR limitation (i.e. form MM6) with WIPO and request a review of the refusal with the CNIPA in view of the MM6. This strategy has been successful in some cases. However, most successes were a result of the limited or altered descriptions becoming standard descriptions while their scopes did not exceed their original ones. Otherwise, the CNIPA is likely to reject such a limitation and uphold the refusal.

For more information and suggestions regarding IR extension in China, please don’t hesitate to consult us. Jiaquan aims to always provide high quality service to our clients.

 

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