Do you really need a trademark in Class 35?

Borsam IP
BORSAM IP———————————————
According to statistics, the number of Chinese trademark applications in Class 35 was 1,086,919 in 2019, about 13.68% of the total. Up to October of 2020, the number was 773,639, about 13% of the total. The number of trademark applications in Class 35 takes the largest part of all forty-five classes.

There are so many trademark applications in Class 35, and it is rumored that the trademarks registered in Class 35 can be used on any goods or services. Hence, people believe the trademarks registered in Class 35 are almighty.

Why is the thirty-fifth class so important? Is it necessary to have Class 35 for your trademark? Let’s try to find an answer through the following case.

In March 2018, Dongfang Xianglin Vegetable and Fruit Base Co. (hereinafter referred to as Hainan Baiguoyuan) sued Shenzhen Baiguoyuan Business Development Co. (hereinafter referred to as Shenzhen Baiguoyuan) for trademark infringement.

The plaintiff is a company with a long history of growing, transporting, and selling fruits and vegetables. Its registered trademark "Baigouyuan" has been recognized as a famous trademark in Hainan Province and enjoys a high reputation.

After the examination, Hainan Baiguoyuan registered the trademark "Baiguoyuan" No. 1466895 (Figure 1) in 2000, designating on the good items "fresh fruits" and so on in Class 31. While Shenzhen Baiguoyuan is a domestic chain of fruit stores, they registered the trademark "Baiguoyuan" (Figure 2) in Class 35 in 2004. The registered trademark No. 6807648 designated on the items “sales promotion for others; advertising; import and export,” etc., which mainly used on signboards of fruit store, Weibo, mini-programs of Wechat, ele, Alipay, and Dianping.

In this case, the plaintiff, Hainan Baiguoyuan, held that its trademark was the prior registered trademark and was recognized as a famous trademark in Hainan Province, which enjoyed a high reputation. Shenzhen Baiguoyuan infringed its trademark rights and copied the trademark.

During the examination, the court held that the trademark applied by Hainan Baiguoyuan was registered in Class 31, designating on the items "fresh fruit," etc., which should be used on specific products, i.e., the fresh fruit. While Shenzhen Baiguoyuan has registered the trademark in class 35, designating on providing the services for advertising, marketing for others, etc. In fact, Shenzhen Baiguoyuan does not plant fruit, and it only sells fruits for others as a fruit store. The trademark "Baiguoyuan" was only used for promotion and did not exceed the scope of approval items.

Secondly, these two trademarks are in different classes. The former is a trademark used on the goods, while the latter is a trademark used on the services. The items of goods and services are not similar. The plaintiff has not entered into the retail industry, so it would not cause confusion to consumers. The defendant has its own fruit chain stores all over the country, and its trademark enjoys high popularity in China, which does not rely on the reputation of the plaintiff's trademark.

In summary, the court held that the defendant did not infringe the trademark rights of the plaintiff. They used their registered trademark reasonably and legitimately.
From this case, we may see those two trademarks are the same with the text and meaning, and it is hard to recognize which one do you mean when people say the name. Though the court judged that Shenzhen Baiguoyuan didn’t infringe Hainan Baiguoyuan’s trademark rights, new disputes may raise when Hainan Baiguoyuan wants to expand its business in the retail field. Once the Hainan Baiguoyuan set fruit shops in the countrywide while all the products are grown by themselves, will Shenzhen Baiguoyuan retaliate by filing another lawsuit? And what would be the ending of the story?

Anyway, for Hainan Baiguoyuan, it may avoid such a situation if he puts Class 35 in his trademark plan initially. Hence, sometimes people choose to include Class 35 in its application for the purpose of defense, not because Class 35 is almighty. We suggest filing a trademark in Class 35, which costs much less when facing similar trouble with Hainan Baiguoyuan.