Newsletter
DRAFT TRADEMARK EXAMINATION GUIDELINES FOR RETAIL SER-VICES PUBLISHED
In August 2008, the Intellectual Property Office (IPO) announced
a draft of its proposed new Examination Guidelines for Retail Services, which it
stated would take effect at the same time as amendments to the Trademark Government
Fee Standards. The IPO is still drafting
amendments to the Fee Standards and does not expect to announce them until 2009,
so that at present no definite date can be given for the implementation of the above
Guidelines.
The Main Points for Examination of Service Mark Applications for
Retail Services, which were announced on 20 April 1998, have been in effect for
more than 10 years, so that their content is in need of revision.
Additionally, since trademark registrations designating "retail
services" were first allowed, in practice there have been many applicants who do
not clearly understand the meaning of "retail services."
Therefore the draft Guidelines provide detailed explanations of
the definition and nature of retail services, the categories of retail services,
the examination of designated retail services, the principles for judging similarity
between retail services and other goods and services, and the use of retail services
trademarks, for reference when examining related cases.
The main points of the draft Guidelines' content are outlined below:
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"Retail services" are defined as services whereby "a variety of goods are brought together, enabling consumers to conveniently view and purchase them." Such services may be provided by retail stores, by wholesale outlets, by mail order, or by means of electronic media such as the Internet or television shopping channels.
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Retail services can be distinguished into two categories: "retail services in general goods" and "retail services in specific goods." Unless an applicant wishes to use the same trademark for different sales channels, if a trademark application designates a mark for use with retail services in general goods, in principle it cannot also designate the mark for retail services in specific goods. If an application designates both categories, the trademark examiner may instruct the applicant to provide an explanation, for reference in examining the issue of whether the designated services should be amended.
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In principle, "retail services in general goods" provided by different trademark owners should be considered similar; but in principle there is no similarity between "retail services in general goods" and the goods sold at retail by the mark owner, or between "retail services in general goods" and services other than retail services, or between "retail services in general goods" and "retail services in specific goods."
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In principle different subclasses of "retail services in specific goods" should not be considered similar, unless the retail services provided are similar in nature, such that they are likely to satisfy identical demands of consumers. In principle there is no similarity between "retail services in specific goods" and "retail services in general goods," or between "retail services in specific goods" and services other than retail services. In principle there is similarity between "retail services in specific goods" and the said specific goods sold at retail by the mark owner.
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Retail services are services provided in combination with the sale of goods. Accordingly, in order to promote its services, the trademark rights holder may use its mark on objects, documents, advertisements and publicity materials related to its business operations, such as store signs, floor guide notices, and signage indicating sales areas; shopping trolleys and shopping baskets; display fixtures and display windows; checkout cash registers and sales receipts; uniforms, headwear, and name badges of store personnel; fitting rooms; catalogues; packaging, wrapping paper, and shopping bags used for goods sold; etc. The trademark rights holder may also utilize such means as digital multimedia, electronic media, or physical media to familiarize relevant consumers with its trademark, including, for example, the use of the mark in television advertising, online advertising, etc.
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"Retail services in general goods" and "retail services in specific goods" are different categories of service. Therefore if an applicant designates a mark for use on retail services in various kinds of specific goods, each such service should be provided as a specific specialized retail service by bringing together on the same premises specific goods, or goods within a specific range, to enable consumers to conveniently view and purchase them. If such service is not provided as a specialized retail service, but instead general goods of various kinds are brought together on the same premises to enable consumers to conveniently view and purchase them, then the service provided is of the nature of "retail services in general goods," and thus is inconsistent with retail services in specific goods designated in the application.