Assessing Similarity of Goods and Services in Chinese Trademark Practice

Are all goods or services in the same Chinese similarity group necessarily similar? If an application is refused because of a prior mark for similar goods or services, can the refusal be overcome on review by arguing that they are dissimilar?

China’s Classification of Similar Goods and Services is based on the Nice Classification. The Trademark Office groups goods and services that are closely related or likely to be confused.

Goods or services in one similarity group are generally presumed similar. Where they are not all similar, the group is divided into subgroups. Items in the same subgroup are generally similar, while those in different subgroups are generally dissimilar. Exceptions, including dissimilar items within a subgroup or similar items across subgroups, are identified in the remarks.

Example: Class 9, Group 0902

Group 0902 covers recording and counting devices. Subgroup I includes pedometers (090137), egg timers or sandglasses (090683) and hourglasses (090683); subgroup II includes apparatus to check franking (090149); subgroup III includes counterfeit coin detectors (090173); subgroup IV includes mechanisms for coin-operated apparatus (090063); and subgroup V includes dictating machines (090188) and hemline markers (090313).

The remarks provide that goods in different subgroups are dissimilar; goods within subgroup V are also dissimilar to one another; and egg timers, sandglasses and hourglasses must be cross-searched against sandglasses in Group 2106 of the seventh and earlier editions of the Classification.

Goods in the same group are therefore not necessarily similar. The Classification and its remarks must be read together.

Arguing Dissimilarity on Review

The Trademark Office refuses a later application where there is an earlier application or registration for similar goods or services. TRAB also applies the Classification and normally does not alter that similarity assessment on review. A challenge based only on dissimilarity therefore has a low prospect of success.

Exceptions may arise where the mark is highly original, has acquired a strong reputation through use, or changing commercial and economic circumstances have made the old classification standard inappropriate. Such departures are cautious and case-specific. If these conditions are met, it may be worth arguing that the goods or services are dissimilar in practice.