Designated goods (services) are the goods or service items recorded on the Trademark Registration Certificate at the time the trademark is approved for registration. Under Article 56 of the Trademark Law, the exclusive right of a registered trademark is limited to the approved trademark and the designated goods—the representation determines "what mark," and the designated goods determine "where used"; together they draw the boundary of the exclusive right.
Legal Basis
- Article 22 of the Trademark Law: the class and names of goods on which the trademark is used shall be declared according to the prescribed classification of goods, thereby determining the scope of the application;
- Article 56 of the Trademark Law: the exclusive right of a registered trademark is limited to the approved trademark and the designated goods;
- Article 48 of the Trademark Law: use of a trademark includes applying it to goods, packaging or containers of goods, and transaction documents, or using it in advertising, exhibitions, and other commercial activities, provided it serves to identify the source of goods;
- Article 49(2) (non-use cancellation for three consecutive years) and Article 64(1) (non-use defense) likewise take the designated goods as the benchmark.
The Triple Significance of the Designated Scope
- Boundary of protection: the exclusive right exists only on the designated items. Another party's unauthorized use of an identical trademark on identical goods constitutes infringement (Article 57(1)); outside the designated scope, you do not enjoy exclusive rights.
- Scope of the use obligation: actual use after registration must fall on the designated items. Long-term non-use of designated goods exposes them to non-use cancellation by others; when infringement is alleged, the other party may also rely on Article 64(1) to claim that the rights holder did not actually use the mark and thus owes no damages.
- Foundation of proceedings and transactions: changes, assignments, renewals, and licensing recordation are all based on the items recorded on the registration certificate. When assigning a registered trademark, similar trademarks registered for identical goods, or identical or similar trademarks registered for similar goods, shall be assigned together (Article 42(2)).
Three Types of Risk from Out-of-Scope Use
Applying a mark registered for product A directly to non-designated product B without filing a new application brings:
- No protection: use on product B is use of an unregistered trademark and cannot be claimed as an exclusive right;
- Administrative risk: marking "registered trademark" or the registration symbol on non-designated goods may be deemed passing off an unregistered trademark as registered (Article 52 of the Trademark Law);
- Infringement risk: if product B is identical or similar to goods covered by another's prior trademark, your use may constitute infringement (Article 57).
The correct course is to file a separate application for product B. The filing date of the new application runs anew and does not enjoy the prior status of the original registration, so product-line expansion should start early rather than late.
Procedures When the Scope Changes
When an application is partially refused, the preliminary approved portion may be divided out into a separate application, which retains the original filing date (Article 22 of the Implementing Regulations), allowing uncontested items to enter announcement and certification quickly without being held up by the review cycle.
Practical Points and Common Pitfalls
- Pitfall one: believing that "once a trademark is registered, it can be used freely on any goods." The exclusive right is tied to the designated items; one registration number does not cover all classes, and "one mark, many uses" does not hold in law;
- Pitfall two: declaring broad class headings or similar-group names when filing. Specific names of goods or service items should be stated; headings and group names are not declarable items;
- Pitfall three: use evidence whose product names do not correspond to the designated items. Retained sales contracts, invoices, and page screenshots should ideally correspond one-to-one with the designated items, to facilitate responses to non-use cancellation and infringement defenses;
- Checking the designated scope before product-line expansion and then deciding whether to file supplementary applications is the lowest-cost approach.
The application of these concepts in practice varies in detail; before proceeding, you may consult a registered agent via MyTMBee for targeted analysis.