China is a party to the Nice Agreement and applies the Nice Classification. The Chinese Trademark Office also uses its own Classification of Similar Goods and Services, based on the Nice Classification. Examiners apply strict standards to descriptions, so applicants should use the two classifications to help avoid office actions. The following practical points may assist.
China began using the tenth edition of the Nice Classification on January 1, 2012.
1. One trademark, one class
China follows a one-mark, one-class application system. A single application may cover only one class. Separate applications are needed where a mark is to be used for goods or services in different classes.
2. Choose specific items rather than subclass headings
Each class in the Chinese classification has explanatory notes and is divided into subclasses. Neither the explanatory notes nor the subclass headings may be designated as goods or services. Applicants should choose specific items bearing six-digit numbers.
For example, under subclass 2907, “milk and milk products” is a heading and is unacceptable as an item. “Soya milk [milk substitute]”, numbered 290163, is an acceptable designation.
3. Use accurate and clear Chinese translations
Translations should be accurate, concise and clear. Technical terms should follow standard Chinese usage. Where the classifications provide a standard name, it should be the first choice. Lengthy modifiers may make a designation non-standard or insufficiently specific.
A broader standard term may be suitable: for example, the unacceptable “training suits for football” may be replaced by “clothing”. In other cases, a more specific term is needed: “services for providing food and drink” is too broad and may be replaced by “restaurants; bars; tea houses”.
4. Make effective use of the ten-item fee allowance
The official fee is the same for an application containing up to ten items. Even if the applicant’s actual goods or services number fewer than ten, it is advisable to designate ten items with the broadest suitable coverage. This makes effective use of the fee and extends the scope of protection. Each item beyond ten incurs an additional official fee of approximately USD 16.
5. Consider broader terms where there are more than ten items
If the items are already specific and standard but exceed ten, broader designations may reduce costs and extend protection. For example, “vehicles for locomotion by land, air, water or rail” may replace “cars, motorcycles, bicycles, aircraft” and similar individual terms.
6. Respect the scope of a priority application
When priority is claimed, the Chinese goods and services cannot extend beyond those in the priority application. Non-standard items can therefore be amended only by limitation or further specification.
7. If no suitable classification term is available
The applicant may initially file using its own description and amend it after receiving an office action. Several opportunities to amend may be available. Explanatory materials or pictures of the goods or services may be provided for the examiner’s reference.
