1. Case Summary
Trademark:
Registration No.:4871143 Approved Services (Class 35): Organization of exhibitions for commercial or advertising purposes; acting as an intermediary for others (purchasing goods or services on behalf of other businesses); sales promotion for others; import-export agency services.
A party submitted a request to cancel the above trademark on all approved services based on the grounds of "non-use for three consecutive years." In response to the cancellation, the registrant submitted evidence of use including materials on the display and sale of goods on the Internet, business registration documents, employee training manuals, exhibition tickets, service location signs, product labels, sales receipts and invoices, etc., aiming to prove the genuine, public, and lawful commercial use of the registered trademark in the "sales promotion for others" service. In other approved services, the registrant did not submit any evidence of trademark use.
After examination, the China National Intellectual Property Administration (CNIPA) held that: the sales materials submitted by the registrant were only about the registrant's sales of goods, not provision of services, and the rest of the evidence did not show the service item "sales promotion for others" either, therefore the whole evidence was insufficient to prove the genuine, public, and lawful commercial use of the registered trademark in the "sales promotion for others" service. The trademark was eventually cancelled on all the approved services.
2. Case Analysis
The focal issue in this case is whether the registrant had made genuine, public, and lawful commercial use in the "sales promotion for others" service during the specified period.
The "sales promotion for others" service belongs to Class 35 of Nice Classification. In accordance with Chinese Classification of Similar Goods and Services made by the CNIPA based on the Nice Classification, Class 35 mainly includes services for business management, operation, organization, and administrative management of commercial or industrial enterprises, as well as advertising, marketing, and promotional services. However, according to classification requirements, the sale of goods is not regarded as services in class 35. In 2022, the CNIPA issued the "Guidelines on the Registration and Use of Service Trademarks in Class 35 (the Guidelines)," further explaining the connotation and extension of Class 35 service items.
The Guidelines state that the main purpose of Class 35 services is to assist others in their business operation or management, to assist other industrial or commercial enterprises in managing their business activities or commercial functions, and to provide others with advertising, marketing, and promotional services to the public through various means. The key characteristic of these services is that the services are provided for others, rather than being performed for the right holder's own business needs.
Regarding the service "sales promotion for others", the Guidelines specify that it refers to providing specific suggestions, planning, consulting and other services to help others increase the sales or demand for their goods or services in the market. It does not include selling one's own goods or services directly to consumers through retailing or wholesaling, nor does it include selling other people’s goods or services to earn price differences. In other words, pure sales of goods do not belong to "sales promotion for others" service. Only a market entity that provides advertising, product display and promotion services for others can be considered to offer "sales promotion for others" services.
In this case, the registrant is a shop specializing in selling clothing, gifts, daily necessities and other goods. The registrant's daily business activities are to buy other people's goods and then sell them to consumers to earn price differences. The use evidence submitted by the registrant, including screenshots of webpages, product labels, sales invoices, etc., all shows that the registrant retailed clothing, cups, candles, etc., to consumers, and does not provide advertising, promotion, or other services for the producers or distributors of the goods. Therefore, the evidence cannot prove the trademark's use in the "sales promotion for others" service.
3. Conclusion
Generally, for typical goods production enterprises that only manufacture or sell their own products as the business scope and do not engage in providing advertising services or business management assistance for other market entities or individuals, there is no need to apply for trademark registration in Class 35 related services. Even if registered, it may be cancelled later due to the inability to prove its actual use.
For market entities that sell other people's goods or services to earn price differences, such as shops, supermarkets, shopping malls, etc., if they only engage in sales of goods, there is also no need to apply for trademark registration in Class 35 related services. However, if the entity also provides services such as advertising, display of goods, sales promotion, etc., the relevant entities shall apply for trademark registration in the corresponding services in Class 35, and pay attention to the retention of evidence of use to respond to the possible cancellation actions by others.
