Further to same topic article dated 26 July 2022, we are going to talk about the two common misunderstandings which led the applicants believe that the Class 35 trademark is a must-have trump card in China - the specification in Class 35 and the requirements of a setup Tmall store.
The first common misunderstanding about Class 35 trademark is the meanings of “items of specification”. In Class 35, it includes provision of services such as ‘advertising’, ‘business management’, ‘business administration’, ‘sales and promotion’, which makes many of our clients were wondering that “is it a MUST to get registration on advertising before promoting our own brand?” or “is it a MUST to get registration on presentation of goods on communication media for retail purposes before launching?”
The answers for both questions are “NO”.
These specifications mean that the brand owners are providing services of advertising, business management, business administration FOR OTHERS, such as marketing companies, marketplaces, and E-commerce online platforms. However, these misunderstandings have led lots of brand owners applying their mark in Class 35 which is not required for launching.
The second common misunderstanding about Class 35 trademark is the requirements of setup Tmall store. As Tmall and Taobao are now the most important E-commerce online platforms in China for brand promoting. Setup a store in Tmall would be the cornerstone of step in China market for every brand. There are four types of stores could be setup in Tmall:
Please keep in mind that if your store is representing a brand of products, it should be either a Brand’s Flagship store or Authorized store. However, if name of a Tmall store is different to the brands of products selling, it should be a Marketplace’s Flagship store.
Therefore, to setup a Marketplace’s Flagship store, an operator must provide China trademark supporting documents which covering at least one of the specifications in Class 35, such as ‘sales and promotion for others’, ‘presentation of goods on communication media for retail purposes’, ‘provision of an online marketplace for buyers and sellers of goods and services’.
However, to setup a Brand’s Flagship store or an Authorized store, an operator must provide China trademark supporting documents in correct specification of goods in specific class (for example, cosmetics in Class 3, shoes in Class 18, clothing in Class 25), with a licensing agreement if such operator is not owner or applicant of the trademark of the brand.
According, we could see that only operators of Marketplace's Flagship stores are required to register trademarks in Class 35 in China, however, most of the brand owners are confused by the two types of “Flagship” stores and keep applying their own brands with the aforesaid items in Class 35 to fulfill the nonexistent requirement of setting up a Brand’s Flagship stores on Tmall.
As aforesaid, applying trademarks in Class 35 in China has become a common business practice, even priority for E-commerce platforms, shopping malls and distributors in China, and led the applicants believe that the Class 35 trademark is a must-have trump card in China.