This document discusses several peculiar issues to remember when conducting trademark searches in China, including: 1) China has 506 subclasses for classifying goods and services, and registrations must use "standard goods" from a catalogue. This system is highly formalistic and slow to evolve. 2) Searches and registrations need to be conducted in both English and Chinese due to translation issues, and translations are not straightforward as multiple interpretations may exist. 3) Examiners at the China Trademark Office are relatively young, receive limited training, and handle a very high volume of applications, so rejections may stem from poor translation work and it helps to appeal decisions.

1. SUBCLASSES, “STANDARD GOODS”, 40,000 CHARACTERS,
AND OTHER PECULIAR ISSUES TO REMEMBER
WHEN CONDUCTING
TRADEMARK SEARCHES IN THE PRC
Another Quality
Arm & Hatchet
Production
By
Paul Schmidt 舒明德

2. The Epidemic of Bad-Faith
Paul Schmidt 舒明德
Targets are Well-Known in China

3. The Epidemic of Bad-Faith
Targets are not Well-Known in China
Paul Schmidt 舒明德

4. The Epidemic of Bad-Faith
Some “Brands” Become Overwhelmed – Jackie Chan
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5. The Epidemic of Bad-Faith
The Defensive Registration Response – Yao Ming
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6. Paul Schmidt 舒明德
Take Away:
• Remember Yao Ming
• Broad defensive filings are
recommended, and thus also, at times,
broad defensive searches

7. How many trademark classes are
there in the PRC?
Paul Schmidt 舒明德
Practicallyspeaking

8. PRC subclasses and “standard goods”
Catalogue of Goods
and Services
 The 506 subclasses
 “Standard goods
and services”
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9. PRC subclasses and “standard goods”
Highly Formalistic
 “Clothing” (2501)
Not included:
− Socks (2509)
− Gloves (2510)
− Ties (2511)
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10. PRC subclasses and “standard goods”
Very Slowly Evolving
 “MP3 Player” not
included for years
- substitute
standard good:
“juke box”
 “On-line social
network service”
added Jan. 1, 2014
Paul Schmidt 舒明德

11. Paul Schmidt 舒明德
Take Aways:
• If you have a relatively new and innovative product:
– Make sure your PRC search counsel has designated the
appropriate PRC subclasses in order to make sure you
are looking in the most relevant areas of the PRC
trademark register.
– The PRC Trademark Office will probably reject it as
“non-standard” and you will need to work closely with
your PRC counsel to make sure you have claimed
appropriate “standard goods” in appropriate PRC
subclasses in order to obtain the kind of protection
desired.
• If you have a Class 1 product . . . . please call me.

12. Chinese Language Issues
• The English/Chinese
interchangeability problem
Take Aways:
 Searches need to be run in both English and Chinese
 Registrations need to be made in both English and Chinese
Paul Schmidt 舒明德

13. Chinese Language Issues
• The 40,000 character problem
蝌蝌齦蠟- Kē Kē Kėn Là
- "bite the wax tadpole”
可口可乐- Kė Kou Kė Lè
- "happy mouth drink"
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14. Chinese Language Issues
• The 40,000 character problem
Take Away:
 Don’t bite the wax tadpole
Translating into Chinese is hard. Often numerous
translations are possible. PRC counsel often need extra
time in devising two or more suitable translations – all of
which should be searched.
Paul Schmidt 舒明德

15. Paul Schmidt 舒明德
Chinese Language Issues
 The speed of counterfeiting problem

16. Chinese Language Issues
 The speed of counterfeiting problem
Take Away:
The PRC is a first to file jurisdiction - with no intent-to-use
requirement - and with very high levels of counterfeiting.
One has to move very fast – especially with respect to
Chinese language marks.
Paul Schmidt 舒明德

17. Peculiar Rejections
• “Liberal" use of socialist morality rejections
(社会主义)
Rejected:
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18. Peculiar Rejections
• “Liberal" use of socialist morality rejections
(社会主义)
Accepted:
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19. Peculiar Rejections
• “Liberal" use of socialist morality rejections
(社会主义)
Strategy:
Faced with a socialist morality rejection, consider
reapplying with a "cartoonish" figure to get on the
register, but go ahead and use the "edgy" mark.
Paul Schmidt 舒明德

20. Peculiar Rejections
• Overuse of “Purely Descriptive” or “Non-distinctive”
rejections
Strategy:
This rejection problem often stems from poor
translation work done by certain individual
examiners. The rejections are usually overcome fairly
easily on appeal provided review examiners are
provided good translations from authoritative
dictionaries.
Paul Schmidt 舒明德

21. PRC Examiners – Who are they?
 Most are young –
hired directly out of
law school
 One to three months
of on-the-job
training
 Relatively high rate
of turnover
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22. PRC Examiners – Total Number?
 Difficult number to
calculate
 Best estimates are
between 300 to 500
in any given year
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23. PRC Examiners
– Applications handled per examiner?
 2012 – 1,414,113
applications
processed
 Assuming 500
examiners
 2,828 applications
per examiner
 12 applications per
day, per examiner
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24. Paul Schmidt 舒明德