When registering a trademark, it is essential to provide the exact description of the goods and services to be designated by the trademark. This determines the protection scope of the registered trademark and also, can be a protection against possible future non-use attacks. However, due to the complexity of the sub-class system adopted by the CTMO and to the Examiner's attitude when examining trademark applications, which is sometimes capricious and rigid, it is not always easy to select the right goods and services. Yet, the description must be accurate and specific.
Referring to the class heading does not mean protection for the whole class
We see this quite often with international trademarks. The description of goods mirrors the class heading of the Nice Classification. But, in the sub-class system, the class heading usually only covers a few sub-classes in that particular class. For instance, the official Nice heading for Class 25 is "clothing, hats and shoes". If you file a Madrid application with that class heading, you might think your trademark will cover all products in Class 25, but in fact your trademark will not have any protection for socks, gloves, scarves or belts.
The specific description may help to obtain the co-existence
The amount of trademark applications increased sharply in China in the recent years. In 2015, the CTMO received over 2.87 million new trademark applications. The total amount of registered trademarks now exceeds 10.3 million. With such a large amount of trademark applications and registrations, the likelihood of conflict with earlier marks increases. Therefore, a specific and precise description of goods may help the applicant to find space and co-exist among earlier marks.
In October 2013, Microsoft applied to register the trademark "LAUNCHWORKS" in respect of "game software", but was refused by the CTMO due to the earlier trademarks "LAUNCH" which was registered in respect of "management software for motor vehicle maintenance and repair" and "computer peripheral devices". All these goods fall into the sub-class 0901 according to the Classification Book. Microsoft appealed against the refusal decision but was dismissed by the TRAB. Microsoft further filed an appeal to Beijing IP Court. After the hearing, the Judge found that "game software" is provided to the game players for amusement, while the "management software for motor vehicle maintenance and repair" is a tool provided to the drivers for auto repairing and maintenance, and such goods can be deemed as dissimilar goods due to their different function, providers, sales channel and consumer groups. Thus, the Judge ruled to cancel the refusal decision made by the TRAB.
Inaccurate description of goods may be vulnerable to non-use cancellation
The requirement of evidence proving that a registered trademark is used has become more and more strict. If the goods description is different from the products on which the mark is actually used, even they could be regarded as similar goods, the trademark registration faces a high risk of being cancelled for non-use.
In previous practice, the evidence of use on one designated item was enough to maintain the entire registration on all the designated goods before the CTMO. The TRAB was stricter, but normally the use of one item at least could maintain the registration on all the similar goods in the same sub-class. However, in a recent decision made by the TRAB in March 2016, the TRAB accepted the use evidence provided for "facial creams, skin-care creams" but still cancelled the registration in respect of the similar goods "perfume, lipsticks, hair lotions, etc.". In late April, the Supreme Court issued its 2015 Annual Report citing a retrial case in which the use on "scraping-wall greasy powder" fails to maintain the registration on "paints" in a non-use cancellation action.
Inaccurate description may jeopardise the enforcement of the trademark
The accurate description is also of high importance for the enforcement of the trademark, especially in a criminal case which requires the use of an identical trademark on identical goods.
In early 2012, a Chinese company named DU GAO was raided by the police for manufacturing and selling "ink-jet printing machines" with the trademark "DOMINO", which was identical to the registered trademark , owned by DOMINO PRINTING SCIENCES PLC. ("DOMINO"). The Court of first instance found that "ink-jet printing machines" should be deemed identical to the designated goods item "ink jet marking apparatus" of DOMINO's trademark. The Court ruled, therefore that DU GAO company and its proprietors had committed the crime of counterfeiting a registered trademark. But, this case had a big turnaround in the second instance. The Court of appeal found that the "ink-jet printing machines" manufactured by DU GAO company is a kind of industrial machines and should be classified into Class 7, while the "ink jet marking apparatus" of DOMINO in Class 9 are provided for the domestic or commercial purpose, so they could not be deemed as the same products. Therefore the Court said that DU GAO did not commit a crime.
