Is Class 35 trademark registration a trump card? (1)


For a long time, "retailing and wholesaling" are not registrable in most jurisdictions and not listed in NICE classification in the past, however, more and more countries are now opening their doors for "retailing" and "wholesaling" services.


Whether service trademarks used by shopping malls and supermarkets can be registered in Class 35 and protected as a registered trademark is debated both academically and in judicial practice in China.


Until 15 Dec 2021, there are 3,679,968 valid Class 35 trademark registrations (out of 35,322,797 in total) in China owned by registrants from China, Hong Kong, Macau and Taiwan. The number is clearly shows that registrations in Class 35 are much more than registrations in other classes and become a phenomenon that everyone is keep trying to apply their trademark in Class 35 in China.


What makes those applicants believe that a Class 35 trademark is a must-have trump card in China? Here is an important case in China: -


TRADEMARK DISPUTES OF “百果园” (Baiguoyuan)


In March 2018, 东方祥麟菜果基地有限公司 (hereinafter referred to as Dongfang Xianglin) sued 深圳百果园实业发展有限公司 (hereinafter referred to as Shenzhen Baiguoyuan) for trademark infringement.


Dongfang Xianglin is a company established in 1996 which plants fruits and vegetables. Their products are sold under a registered trademark “百果园”, which has also been recognized as a well-known trademark in Hainan Province and enjoys a high reputation. The “百果园” trademark of Dongfang Xianglin is registered in Class 31 under No. 1466895 in 2000, designating on the goods "fresh fruits" and etc.


Shenzhen Baiguoyuan is a domestic chain stores of fruits which established in 2001, who also owns two trademark registrations for “百果园”, one is registered in Class 35 under No. 6807648 in 2010, designated on services “sales promotion for others; advertising; import and export” and etc., and another one is registered in Class 9 under No. 16061008 in 2017, designated on the goods “software; e-publication”. The actual use of this mark is on retail stores, Weibo promotion, mini-program of Wechat, Alipay and Dianping.                


In this case, the courts confirmed the following facts: -


1. Dongfang Xianglin’s trademark is registered in Class 31, designating on the goods "fresh fruits" etc., which should be used on specified products, i.e., the fresh fruit, whereas Shenzhen Baiguoyuan’s trademark is registered in class 35, designating on providing the services for advertising, sales for others, etc.


2. Shenzhen Baiguoyuan does not produce any fruits, but only sells fruits from other producers as a fruit retail store. The trademark "Baiguoyuan" was only used for promotion and did not exceed the scope of approval items.


3. These trademarks are in different classes and the items of goods and services are not similar. The first trademark is registered and used on the goods, while the latter is a trademark used on the services. The plaintiff does not retail its product directly, so it would not cause confusion to general consumers. The defendant has its own fruit chain stores all over the country, and its trademark enjoys high popularity in China, which does not rely on the reputation of the plaintiff's trademark.


In summary, the intermediate people's court and the higher people's court in China both held that the defendant did not infringe the trademark rights of the plaintiff and the defendant use its registered trademark reasonably and legitimately. This is a significant case in China that the owner of a registered trademark in other classes, cannot prevent others from using the same or similar trademark in class 35, even if relating to the same goods. This is one of the main reasons as why applicants are keep trying to apply their trademark in Class 35, even they have already registered their marks in the classes of its goods.


Moreover, the misunderstanding of requirement of setup Tmall and Taobao stores, and the meanings of items in Class 35, further led the applicants believe that the Class 35 trademark is a must-have trump card in China, which we will further discuss in our next articles.


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