Misunderstanding of Category Selection in Application for Registration -- Taking 35 Categories as an Example

In accordance with the relevant provisions of the Trademark Law and its implementing regulations, when applying for registration of a trademark, the applicant shall, in accordance with the goods and services published in the "Table of Differentiation of Similar Goods and Services" (hereinafter referred to as the "Table of Differentiation") based on the Nice classification, fill in the category and name of the trademark it applies for registration. The current Nice classification divides goods and servicesThere are 45 major categories, of which commodities are categories 1 to 34, with a total of 34 categories.,The service is No.35 to 45 categories, a total of 11 categories.Commodity categories are well understood and selected, while the current service categories generally have certain misunderstandings in the market for their application for registration. Among them35 examples.

1. No.Status of Application for Registration of 35 Classes of Trademarks

FromFrom 2015 to 2023, category 35 has been at the top of the application category, and since 2019, the number is much higher than other categories. (For specific values, you can log on to the website for inquiry)

2. No.The reasons for the huge number of 35 types of trademark applications are mainly as follows:

1. Lack of correct awareness of category 35 on agencies and networks, exaggerating its importance

First, the agency company practitioners on the firstClass 35 does not have a correct understanding, believing that as long as the company wants to publicize, it must register Class 35 3501 groups, advertisements and related services, thus believing that this category is an indispensable category in the process of production and operation. On the other hand, the wrong popularization of science on the Internet, through the search on the Internet can see a large number of claims that category 35 is a "universal trademark. These statements inappropriately exaggerate the importance of such trademarks, and there is a big deviation in the understanding and understanding of Cheng etc. On the other hand, it is not ruled out that some institutions use these publicity to mislead trademark applicants in order to increase their business volume and earn agency fees.

2. The operator lacks the correct understanding, blindly follow the registration

Business operators, due to their lack of trademark expertise, have difficulty in accurately assessing No.The importance of 35 types of trademarks to their own brand protection. In this case, the operator may be affected by external publicity and the behavior of enterprises in the same industry, blindly follow the trend or herd mentality, and apply for registration of such trademarks. In addition, due to this misconception, the operator, out of risk prevention considerations, to avoid being involved in legal disputes due to brand infringement disputes, requires full category registration or "related" category registration together. In this case, merchants often do not consider whether their own goods or services are needed, and do not consider the legal provisions of trademark registration for the purpose of actual use.

• In relation to No.Guidelines for the Application for Registration and Use of Class 35 Service Marks

In order to make the relevant market subjects correctly understand the firstThe connotation and extension of 35 types of service items, understand the original intention of the relevant classification items, and reasonably submit trademark registration applications. The State Intellectual Property Office organized and compiled the "Guidelines on the Registration and Use of Class 35 Service Trademarks" for reference by relevant market entities.

(I) No.35 types of service project characteristics

Differentiation Table No.The 35 types of services mainly include services related to the business management, operation, organization and administration of commercial or industrial enterprises, as well as advertising, marketing and promotion services.It is worth noting that according to the classification requirements, the sale of goods is not considered a service.

No.The main purpose of the 35 types of services is to help others in related business operations or management, to help others in the management of business activities or business functions of other industrial and commercial enterprises, and to provide others with advertising services to the public through various means of communication.The most important feature of this type of service is that the relevant service is provided for others, rather than for the right holder's own business needs.

(II) correctly understand35 types of services

Generally speaking, general types of commodity production enterprises, which only manufacture or sell their own goods as their business scope, do not engage in providing advertising services, business management assistance and other services for other market subjects or individuals, do not need Application for trademark registration on 35 categories of related services.

1.Advertising related services:It meansProducts or services for othersconduct advertising, produce advertising, or provide advertising planning services, such"Advertising, posting advertising, advertising advertising film production, outdoor advertising, film advertising, advertising consulting, advertising editing, production and dissemination", etc.It does not include directly advertising for one's own products or services, or asking others to advertise, plan, edit, produce and disseminate for one's own products or services.. In the process of promoting their own products or services, the parties may advertise the trademarks of the goods or services they actually operate. The typical subjects engaged in advertising-related services mainly include those who provide advertising planning, design, production, release, dissemination and other services for others.

2. Business management support related services:refersHelp othersThe act of providing assistance to the operation and management of its business enterprise, for example"Business management assistance, business management consulting, business management assistance business research, hotel business management, organization of business activities, business evaluation services, business data analysis, market research, consumer research", etc.Does not include daily business management, business analysis, research, investigation, etc. for the purpose of carrying out business activities or strengthening its own business management.. The typical subjects engaged in business management auxiliary related services mainly include those who provide business consulting, research, management and other services for others.

3. Franchise-related services:It meansact of franchising for othersBusiness management and other services provided,Excluding the franchising act itself carried out by the franchisor."Franchising" is different from the concept of "business management of franchising". Franchising refers to an enterprise with registered trademarks, enterprise marks, patents, proprietary technology and other business resources, which licenses its business resources to other operators in the form of contracts, and the licensee carries out business operations under a unified business model in accordance with the contract, and pays franchise fees to the franchisor. The commercial management of franchising refers to the provision of consulting, investigation and other auxiliary services for the franchising of the above-mentioned others, with the aim of providing commercial management and other assistance for the business activities of others. Specifically include"Franchise business management assistance, franchise business management consulting, franchise business affairs management, franchise business management" four. The typical subjects engaged in franchising-related services mainly include those who provide business consulting, investigation, management and other services for the franchising behavior of others.

4. Import and export agency services:Refers to the relevant business entities through the provision of professional agency services.For other people's goods to handle import and export trade and other matters. It does not include the situation of trading one's own goods by way of sale, nor does it include the import and export business of one's own products, etc.. The typical subjects engaged in import and export agency services mainly include those who handle import and export-related business on behalf of others.

5. Marketing services for others:refersHelp othersIncrease the sales or demand of its goods or services in the market, and provide specific advice, planning, consulting and other services.It does not include the direct sale of one's own goods or services to consumers through retail or wholesale, nor does it include the sale of other people's goods or services to earn a price difference, that is, the simple act of selling goods does not fall within the scope of selling services to others.. Distributors or providers of goods or services usually belong to the serviced objects of such services. Typical subjects engaged in the promotion of services for others mainly include those who provide specific services for the promotion of other people's goods or services offline or online.When the business activity is only to sell other people's brand products to earn a certain price difference, the business activity actually belongs to retail and does not belong to selling services for others. However, if there are services such as advertising, commodity display and sales promotion in the business activity in addition to selling commodities, the relevant entities can apply for registered trademarks on the corresponding specific services.

6. Provide online marketplace services for buyers and sellers of goods and services:means the relevant business entityFor both buyers and sellersProvide an online platform, the goods and services provided by the sellers gathered on the platform form a collective market, buyers can log on to the platform to purchase the goods or services they need. Does not include the opening of online stores engaged in sales activities. Typical entities engaged in providing online market services for buyers and sellers of goods and services mainly include e-commerce platforms that provide online trading platforms for buyers and sellers.

7. Personal related services:It meansfor othersProvide services such as personal management, recruitment staff, recruitment, etc."Recruitment staff, human resource management, management staff, recruitment staff, employment adjustment, career placement", etc. It does not include staff management, employee post adjustment and recruitment of staff for their own enterprises. Typical subjects engaged in personal-related servicesMainly includes the main body that provides services such as personnel recruitment management for others..

8. Office related services:It meansfor othersProvide document copying, file management, shorthand and other office services, such"Copy services, shorthand, computer document management, secretarial, business document management, newspaper subscriptions", etc. It does not include internal file management, printing and copying, etc. for the enterprise to carry out its own work. The typical subjects engaged in office affairs related services mainly include those who provide photocopying, shorthand, secretarial services for others.

9. Accounting related services:It meansfor othersProvide accounting-related services, such"Accounting, editing account statements, business audits, tax planning, financial audits", etc.Does not include the enterprise itself directly or hire others to help it carry out.Tax planning and business audits. Engaged in accounting related servicesTypical subjects mainly include those who provide financial audit and other services to others..

10. Looking for Sponsorship Services:It meansfor otherslooking for sponsorship services,Does not include seeking sponsorship for one's own related business activities, nor does it include acts such as sponsoring others. The typical subjects engaged in looking for sponsorship services mainly include the relevant subjects who help others find sponsorship services.

11. Pharmaceutical and medical supplies retail or wholesale services:Refers to the concentration and classification of drugs, pharmaceutical preparations, health preparations, medical supplies, veterinary drugs, veterinary preparations and other commodities that require national approval and qualification certificates for retail or wholesale (except transportation), so that customers can see and buy. This service refers to the comprehensive convenience service provided for the above-mentioned special commodities to enter the circulation field, excluding specific commodities such as drugs and pharmaceutical preparations. Typical entities engaged in retail or wholesale services for pharmaceuticals and medical supplies mainly include entities such as the provision of retail services for medical supplies.

Above, remove the No.At 11 o'clock, it is not difficult to see that the 35th category of service trademarks is essentially to provide services for others, not for the company's own operations.

4. the correct use of sectionClass 35 service marks

In order to effectively perform the basic function of a trademark to indicate the source of goods or services, the trademark registrant shall make actual use of the registered trademark. The exclusive right to use a registered trademark shall be limited to the trademark approved for registration and the goods or services approved for use, and the trademark registrant shall regulate the use of the registered trademark.

• Standardized Use of Registered Trademarks

No.The main purpose and characteristics of the 35 types of services areProvide related services to othersTherefore, No.When using their registered trademarks, the owners of 35 types of trademarks should correctly understand the connotation and extension of the relevant service items, and standardize the use within the scope of the approved services.The use of the trademark on the door of the store is for sale.OwnThe production of goods, does not belong to the right.Use of "marketing for others" services. When other market subjects claim infringement of the above-mentioned acts on the basis of the trademark approved in other goods or services, the alleged infringer even if obtained.A registered trademark that "sells" services to others may still constitute infringement or unfair competition against a registered trademark of another person.

• True Retention of Evidence of Trademark Use

for regulationThe trademark registration behavior of "hoarding but not using", cleaning up idle trademarks, releasing limited resources, curbing malicious registration, and maintaining fair competition order, my country has established a non-use cancellation system for three consecutive years, that is, after the trademark has been approved and registered for three years, any subject or Individual can file an application for cancellation because the trademark has not been put into actual use for three consecutive years.

• Proper maintenance and reasonable exercise of rights

The maintenance and exercise of rights should follow the principle of good faith and the principle of non-abuse of rights. Trademark owners should avoid abuse of rights or excessive protection of rights, and relevant parties should also avoid over-limit use.

1.In the process of providing services, market operators are likely to have certain"commercial" and "management" and other characteristics or attributes. The owner of the trademark right of category 35 services cannot, because of the above-mentioned attributes of the services provided by other market entities in their business activities, consider that such acts belong to the same or similar services as category 35 services, thus infringing the exclusive right to use the registered trademark of category 35 services and prohibiting other market entities from providing services properly.

2.When using trademarks in business activities, relevant market entities should also pay attention to the way and boundaries of use to avoid exceeding the necessary limits. For example, when the relevant parties properly use the commodity trademark, they should pay attention to the mode and boundary of use, so as to avoid the infringement of the exclusive right of service trademark caused by the relevant specific use behavior. For another example, the trademark licensee should strictly use the licensed goods or services within the scope of the licensed goods or services, so as to avoid the infringement of the exclusive right of others to use the trademark beyond the scope of the license.

Part of the article comes from the State Intellectual Property Office.

The data comes from the trademark data of Master Kwon.