In the 2013 version (in force from 1 January 2013) of the tenth edition of the NICE Classification of Goods and Services inter alia the following was added: “retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies”. Due to this the China Trademark Office (CTMO) at the same date introduced a new sub-class 3509 to cl. 35 in China. Since the CTMO is rather strict in their assessments of both applications as well as possible opposition cases this new sub-class further emphasizes the importance of defining the services that one wish to seek protection for, as an attempt for a wider scope of protection would risk not receiving approval from the authorities.
The sub-class at the moment contains of the following seven new services:
1. Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies
2. Retail or wholesale services for drugs for human use
3. Retail of wholesale services for pharmaceutical preparations
4. Retail or wholesale services for sanitary preparations
5. Retail or wholesale services for medical products
6. Retail or wholesale services for veterinary drugs
7. Retail or wholesale services for veterinary preparations
The first service is obviously identical to the Nice Classification, and the six other services are further specifications of the first service. The CTMO has stated that the above mentioned services are considered similar and dissimilar in the following way. Service 1 which apparently has a bit wider scope than the other is considered similar to either of services 2, 3, 4, 5, 6 and 7. Any of the four services 2, 3, 4 or 5 is considered as similar to any of the remaining three services within that group. Services 6 and 7 are considered as similar. However, none of the services 2, 3, 4, or 5 is considered similar to any of the services 6 or 7.
Further the CTMO indicates that the above mentioned services will not be considered similar to goods in cl. 5 and not to “sales promotion for others” and other services in cl. 35.
The CTMO has further indicated that any applications would have to be in accordance with the above services. These services are standard terms and any application would have to be within the scope of the services. This of course means that it is possible to use the words “medicines” instead of “drugs” and “medical” instead of “pharmaceutical” and the like. However, the CTMO also indicated that at least the below mentioned services will not be accepted since they are considered to be outside the scope.
- Retail or wholesale services
- Retail or wholesale of drugs
- Retail and wholesale services for certain brands of drugs
- Retail or wholesale services for names of drugs
- Providing consulting services to customers during drug retailing
- Providing information for retail or wholesale of drugs
- Retail or wholesale services for compound preparations provided by medical institutions
- Other non standard items
As a consequence of the new services above, trademark owners within the pharmaceutical field are advised to review their list of services to ensure that the scope of protection still is sufficient, i.e. if there still is protection for the services actually provided, or if new trademark applications are necessary to uphold the same scope of protection as before. In that sense, the new sub-class might of course also affect the outcome in infringement cases.
Peter Hermansson, Attorney at Law
