Jane H. C. Chen
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The Main Points for Examination of Service Mark Applications for Retail Services have been in effect for more than ten years since its publication on 20 April 1998. During this time, relevant local laws or regulations have undergone amendments and the ninth edition of Nice Classification has different interpretations of "retail services" as compared with the previous editions. In practice, applicants often have difficulty in defining retail services. All these factors result in inconsistency between the use of trademark rights and the actual trading practices, as a result of which the purpose of trademark protection cannot be achieved. To elaborate on the concept of retail services, the Intellectual Property Office ("IPO") published the Examination Guidelines on Retail Services ("Examination Guidelines"), which took effect on 1 February 2011, with the Main Points for Examination of Service Mark Applications for Retail Services being abolished on the same date.
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The Examination Guidelines defines the meaning, nature and categories of retail services, provides guidelines for examining the names of retail services, formulates principles for assessment of similarity between retail services and other goods or services, and elaborates on the use of retail service trademarks so as to serve as a reference for the IPO's trademark examiners. The main points of the Examination Guidelines are as follows:
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The term "retail services" is defined as bringing together a variety of goods (excluding transportation services thereof) to enable customers to conveniently view and purchase them. In other words, businesses gather different kinds of goods, which are either produced by themselves or by other producers, in the same location (whether a physical store or virtual store) in order to attract a wide range of consumers and stimulate their desire to purchase these goods by providing convenient shopping environment and the related services.
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While the goods gathered under retail services are not limited to those produced or manufactured by others and may also include all kinds of goods sold under self-developed brands, the subject to be protected under a trademark application covering retail services is all of the services provided by the applicant, rather than the physical goods displayed for sale.
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Retail services are classified into "retail of general goods" and "retail of specific goods." The former gathers a variety of goods, in a non-exclusive form, in the same location, enabling consumers to view and purchase them, such as "supermarkets," while the latter gathers, in an exclusive form, specific goods or a specific range of goods in the same location, enabling consumers to view and purchase them, such as "retail of clocks and watches." In principle, the IPO does not accept an application that is designated for use on both retail of general goods and retail of specific goods.
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Trademark use in connection with retail services includes the use of a trademark on articles, documents, advertisements or publicity campaigns relating to the applicant's business in order to promote the services that the applicant provides, such as business signboards, instructional signs erected on each floor of store, signs indicating sales zones, shopping carts, shopping baskets, display shelves, cash registers and receipts used at points of sale, shop windows, salespersons' uniforms, hats and name badges, fitting rooms, product catalogues, and packaging, wrapping paper and shopping bags for the goods sold.
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Some designations are not suitable as the names of retail services, such as "retail of customized XX" (for instance, retail of wafer manufacturing machines), "logistic center" or "telephone shopping."
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