By King & Wood’s Intellectual Property Group
Whether service trademarks used by shopping malls and supermarkets can be registered in International Class 35 and receive protection as a registered trademark is rigorously debated both academically and in judicial practice in China.
Opponents argue that the China Trademark Office (CTMO) has clearly stated that wholesale and retail services are not included in Class 35, and thus the services of shopping malls and supermarkets cannot be classified as such (the CTMO published this in their official written reply to Sichuan Provincial Administration for Industry and Commerce, "Reply to the Issue of Whether Shopping Mall and Supermarket Services are Included in Class 35" on August 13, 2004). Furthermore, it stated that the contents of "sale promotion (for others)" refer to providing advice, planning, promotion and consulting for others to sell goods or services. As a result of the Reply, even if a trademark is registered under "sales promotion (for others)", such marks of wholesale and retail enterprises, such as department stores, supermarkets, wholesale markets, can hardly be effectively protected by China’s Trademark Law.
At present, the CTMO has not approved any trademark to be registered on the services of wholesale and retail, which means that only unregistered trademarks can be used on shopping malls and supermarkets. Furthermore, the court also favored this view even before the ninth international Nice Classification was implemented in 2007.
Supporters of inclusion in Class 35 believe that the CTMO issued the Reply based on the eighth edition of the international Nice Classification, where the footnotes of Class 35 prescribe that the class "does not include, in particular, enterprises whose main function is to sell goods, namely, activities of commercial enterprise". However, the aforesaid contents have been deleted in the ninth edition of the international Nice Classification, which came into force on January 1, 2007.
Before the ninth edition of the international Nice Classification was implemented, there were a few judgments made by Chinese courts that were inconsistent with the Reply. However, after the application of the ninth edition, more judgments reflect that the views of the courts have begun to change on such issues. They are gradually going beyond the constraints of the Reply and making independent judicial judgments about trademark protection. In some cases, courts seem inclined to think that sales by commercial enterprises, such as department stores, supermarkets and large-scale wholesale markets, fall under the scope of "sales promotion (for others)".
Currently, the CTMO still has not accepted nor approved any trademark application relating to wholesale or retail services. However, in the rules, decisions and judgments rendered by the CTMO, the TRAB and the courts, the trademarks of several famous supermarket and department store chains, such as Wal-Mart and Gome, have been recognized as registered well-known trademarks under the scope of "sales promotion (for others)" instead of being unregistered well-known trademarks under supermarket and department store services. So far, whether shopping mall and supermarket trademarks can be registered and whether such trademarks can be registered under the scope of "sales promotion (for others)" in Class 35 is not clear. It is expected that future laws, regulations, authoritative administrative interpretations and judicial interpretations will clarify the current situation. (Written by Hua Yang, Connie Zhuang and Jiaqi Zhang)