When West Goes East: Chinese trademark classification

Once brand owners have their brands registered in China, many think that they are safe from the clutches of brand pirates. Yet brand owners are often lulled into a false sense of security about the extent of their trademark protection in China.

The Chinese classification system

One of the key reasons for this is the unique system of trademark classification in China. In contrast with most other trademark classification systems, each Chinese class is divided into a number of different sub-classes, each of which contain a list of "Standard Items" of Goods and Services.

For example, one of the most popular classes, class 25, has 13 separate sub-classes. Each sub-class contains a number of "Standard Items" of Goods or Services. The Chinese National Intellectual Property Administration (CNIPA) generally only cross checks an application against pre-existing identical or similar registered trademarks registered in identical sub-classes and not against pre-existing registered trademarks registered in other sub-classes.

The result of this mechanical approach is that, where a mark is only registered in one sub-class within any given class, a pirate may successfully register an identical or confusingly similar mark in a different sub-class within the same overall class.

Don't leave "gaps" for pirates to fill

Many Western brand owners have found themselves subject to trademark pirates who have spotted "gaps" in their sub-class coverage and who have proceeded to fill those "gaps".

When filing new trademark applications, it is essential the specification dovetails with the relevant sub-classes to ensure the right "Standard Items" are selected and the entire class of Goods and Services is locked-out, leaving no gaps to be filled by trademark pirates.

Protect review

As well as ensuring all new applications lock-out all relevant sub-classes, our PROTECT™ review service will ensure your brand is sufficiently protected in China.

For more information about how our PROTECT™ service can help you, please see our website at www.dlapiper.com/protect or contact your usual DLA Piper contact.