Because of this blog, our China lawyers get a fairly steady stream of China law questions from readers, mostly via emails but occasionally via blog comments as well. If we were to conduct research on all the questions we get asked and then comprehensively answer them, we would become overwhelmed. So what we usually do is provide a super fast general answer and, when it is easy to do so, a link or two to a blog post that may provide some additional guidance. We figure we might as well post some of these on here as well. On Fridays, like today.
One question we often get asked is: can I just copy the specification of goods/services from my US trademark to my China trademark? The answer is the classic lawyerly response: it depends.
Because the US requires proof of use prior to registration, the specification for a US trademark application is narrow in scope and only covers those goods/services actually provided by the applicant. Moreover, because USPTO examiners actively police overbroad language, the specifications are rarely capacious enough to cover any expansion of the client’s business to a new product line or new services. This is in stark contrast to China, which does not require proof of use for registration and implicitly encourages companies to cover a much broader range of goods/services than they actually provide. See China Trademarks: Register in More Classes, Take Down More Counterfeit Goods. Even if you could use the same description of goods/services in China as in the US, you might not want to. Why would you voluntarily diminish the scope of protection for your trademark?
Similarly, if the final description accepted by the USPTO does not match up with the formal Nice Classification list of goods/services (or the additional formal list propagated by the Chinese Trademark Office), then you are at the CTMO examiner’s mercy when it comes to determining the subclass. If the description is clear and an obvious parallel exists to a listing in the Nice Classification, then you can be fairly confident that your trademark will be in the proper subclass. But if your item is not clearly similar to a listing in the Nice Classification – because it is too new or too unusual or for any other reason – then you’re throwing caution to the winds. This problem is quite similar to the one with Madrid System applications, in which the national applications use the same specification as in the original application. See China Trademarks. Register Them In China Not Madrid.
In short, you can’t just cut and paste your trademark specification and expect it will be treated the same way in China as in the US. You wouldn’t (or shouldn’t!) have that expectation with an OEM agreement or licensing agreement in China. See China Contracts: Make Them Enforceable Or Don’t Bother. In certain situations it will be fine; in many others it won’t. And the only way to tell the difference is to consult with experienced China trademark counsel.This article was written by Matthew Dresden and published on China Law Blog. Original Post: https://www.chinalawblog.com/2018/02/quick-question-friday-china-law-answers-part-xlviii.html