Why is covering ‘everything’ a trap?
Registering in all classes of the Nice Classification does not provide absolute protection for a brand; on the contrary, it creates a serious risk of certificate cancellation due to non-use. A well-thought-out strategy will help you significantly save your budget and avoid the traps that lie in wait for owners of “dormant” trademarks.
The Myth of Absolute Protection
Many entrepreneurs believe that total category coverage guarantees security, but legal practice proves otherwise. To understand the real state of affairs, it is worth analyzing the risks of rights cancellation and evaluating the financial feasibility of such extended protection.
Risk of cancellation due to non-use
Registering a trademark “just in case” across all 45 Nice Classification classes often becomes a trap. In Ukraine, the “use it or lose it” principle applies: if you do not use a trademark for certain goods for five years, any interested party can initiate the early termination of the certificate in that regard. This creates ideal conditions for patent trolls who monitor such “dormant” assets for subsequent blackmail or raiding.
For example, a clothing manufacturer that registers a trademark in classes 25 and 35, but additionally covers class 34 (tobacco products) without any real production plans, gives competitors a legal basis for a lawsuit. Instead of accumulating nominal rights, focus on your actual business model.
| Class selection criteria | Strategy outcome |
|---|---|
| Actual use or launch within 1-2 years | Justified investment, creating a barrier for competitors |
| Selection “just in case” without a strategic goal | Risk of cancellation and unnecessary expenses (the amount of which depends on the number of selected classes and the applicant’s status) |
| Protection of strategic related categories | Strengthening positions and preventing trolling |
Adapting the list of goods to the specifics of your brand helps avoid additional inquiries from the IP office’s examination department. To build an effective and secure protection strategy, we recommend consulting with professionals to conduct a preliminary search and form a correct list of Nice Classification classes.
Financial Feasibility of Registration
Beyond legal pitfalls, excessive ambition during the application process can hit your budget hard. Each additional class is not just a checkbox on a form, but a specific government fee. If a business attempts to secure trademark protection in all classes simultaneously, costs grow exponentially, often without any practical benefit to operational activities.
Let’s look at the numbers. In Ukraine, the government fee for filing an application for one class is 4,000 UAH (if filed electronically). Each subsequent class adds the same amount. Registration in all 45 classes will cost 180,000 UAH just at the filing stage. Add to this the fees for the publication of the certificate issuance (600 UAH per class) and subsequent duties. As a result, you spend a significant budget on categories you will never use, instead of investing those funds in marketing or a high-quality search for identity and similarity.
| Comparison Parameter | Total Registration (all classes) | Strategic Registration (priority classes) |
|---|---|---|
| Financial costs | Maximum (hundreds of thousands of hryvnias) | Optimized for the actual budget |
| Legal stability | Weak (high risk of cancellation due to non-use) | High (the TM is actively used in business) |
| Protection against trolls | Creates an illusion of security, provokes lawsuits | Reliable protection of key assets |
| List clarity | Cluttered with unnecessary goods | Clearly corresponds to the business model |
To avoid unnecessary expenses and form an effective protection strategy, we recommend consulting with specialists. A professional audit of your intellectual property will help eliminate unnecessary classes and focus on real risk areas, which will save you from excessive expert inquiries and optimize your budget.
Legal nuances of drafting a list
Competent drafting of a list of goods and services requires more than just mechanically copying Nice Classification headings; it demands a thorough analysis of business specifics, which helps avoid lengthy clarification requests from examiners and claims from third parties.
Adapting goods to your business
Adapting standard Nice Classification (NCL) terms to the specifics of your business helps avoid unnecessary examination queries. Instead of copying broad categories, choose specific wording that corresponds to your current operations and strategic plans for the next 2–3 years.
Comparison of registration strategies:
- “Total Registration” (45 classes): High fees; risk of cancellation due to “dormant” classes; inability to prove brand usage in all areas.
- “Targeted Registration” (Focus on core business): Budget optimization; strong legal foundation; no grounds for non-use cancellation lawsuits.
Related material on the topic: How to correctly choose Nice Classification classes.
Avoiding Examination Requests
Once you have adapted the list to your business, the moment for legal “polishing” arrives. Even the most accurate list of goods can cause delays if it is formulated in language that allows for ambiguity. The examination by the IP Office (National Intellectual Property and Innovation Office) carefully checks every item for compliance with Nice Classification terminology, and any error leads to a request for clarification, which automatically adds several months to the waiting process.
- Avoid abstract categories: Instead of “household goods” or “accessories,” specify concrete items, such as “glassware” or “keychains.”
- Away with bureaucratic jargon: Do not use phrases like “and similar goods” or “other products of this class” — the examination always requires their removal or detailing.
- Check the current edition: Use terms from the current edition of the Nice Classification to avoid receiving a notice of classification non-compliance.
- Specify the material: For many products (especially in classes 14, 18, or 21), it is critical to indicate what they are made of: precious metals, leather, or plastic.
Entrepreneurs often try to obtain the “maximum” scope of rights by adding overly broad wording. However, legal practice shows that clear and narrow specialization provides better protection than vague terms. If you know how to choose classes correctly, you are already halfway to success, but the final result depends on how understandable your list is to the state registrar. Remember the use it or lose it principle: every item in your certificate must be supported by real activity in the future.
Excessive detail or, conversely, an overly general description can become a “hook” for patent trolls or competitors looking for weaknesses in your legal protection.
How competitors exploit your greed
Your desire to protect a trademark in all 45 Nice Classification classes often becomes a trap. In practice, “dormant” trademarks are easy prey for competitors who use the “use it or lose it” principle. In court, opponents can initiate lawsuits for the early termination of a trademark regarding goods you do not actually produce, gradually “clearing” the legal field for their own business.
To avoid becoming a target for intellectual property trolling, it is worth moving away from a strategy of total coverage in favor of targeted protection. For example, instead of copying general Nice Classification names, we recommend adapting the list of goods to your actual activities—this allows you to more clearly define the boundaries of your rights. Read more about the competent selection of categories in our guide to choosing classes.
Well-known global brands usually choose a strategy of gradual expansion: registration occurs only in those classes where active commercial activity is already being conducted or is planned. This not only minimizes the risks of cancellation but also allows you to avoid unnecessary expenses at the registration stage. To develop an individual protection strategy that meets your business goals, contact us for professional trademark registration.
Termination Lawsuits: Real Threats
The realization of how competitors exploit your greed usually arrives with a court summons. A strategy of total coverage across categories you will never use creates an illusion of security, but in reality, it turns your intellectual property into a target for opposing legal professionals.
The Law of Ukraine “On the Protection of Rights to Marks for Goods and Services” provides for the possibility of early termination of a certificate if a trademark has not been used for five years. Competitors who want to enter the market with a similar name first conduct an audit of your activity. If they see that you have registered a brand for “clothing” but only sell “coffee,” they can easily cancel part of your protection through the court. This is not just theory—it is a standard procedure for “clearing” the market.
Expert Insight: One of our clients registered a trademark in all 45 classes, spending a significant budget on fees. Three years later, a large international chain filed a lawsuit for partial cancellation of the certificate in 30 classes where the client was not conducting business. As a result, they not only lost part of their registration but also incurred legal costs that could have been directed toward marketing their core product.
Registration should be a living part of your business, not dead weight in the state registry. If you are unsure about the necessity of covering a certain category, it is worth studying common mistakes made when selecting classes so as not to give competitors a reason to attack. Such an approach will help maintain control over your brand without unnecessary legal risks.
To minimize the likelihood of such lawsuits, it is important to understand which categories are critical for your survival in the market today and which can be deferred for later.
Priority Category Checklist
Instead of “collecting” classes, focus on creating a “protective core”:
- Core categories: Priority is given to classes where your product is already present on the market.
- Adjacent niches: Add categories that support your main activity (for example, class 35 for marketing services and retail).
- Strategic reserve: Limit expansion to those classes where product launches are planned for the next 2–3 years.
When preparing the list of goods and services, avoid literal copying of Nice Classification headings. To obtain a properly formulated list compatible with IP Office requirements, detail the names of goods according to the specifics of your activity rather than formal standards. This approach minimizes the number of clarification requests from examiners.
The optimal strategy is not to protect “against everything,” but to create a monopoly in your actual business environment. If you need help choosing categories to minimize risks, request our trademark registration service to develop an individual brand protection tactic.
Related material on the topic: 5 critical mistakes when choosing Nice Classification classes on your own.
If you need assistance with this task, take advantage of our Trademark Registration offer.
Strategy Above All
Trademark registration is an investment in security, where the quality of declared rights always outweighs their quantity. Attempting to secure total trademark protection across all classes without a real business plan only creates an illusion of stability, making your brand vulnerable to lawsuits due to non-use and attracting unwanted attention from patent trolls. Instead of accumulating “dormant” categories, it is worth professionally selecting a list of Nice Classification classes, adapting standard wording to the actual needs of your product to avoid inquiries from the IP Office examination. If you aim to build a viable strategy and obtain reliable protection without legal ballast, the specialists at Polikarpov Legal will help develop an individual trademark registration plan that aligns precisely with your commercial goals.
Frequently Asked Questions
Is it possible to apply for an expansion of the list of Nice Classification classes after the main trademark has already been registered?
Yes, you can expand your protection, but it is important to understand a technical nuance: this is not processed as an “addendum” to an existing registration, but as filing a new application for the same trademark for additional Nice Classification classes.
For a business, this means:
- A new examination stage for the new classes.
- Separate filing and publication fees for each new application.
- The possibility of a conflict if, during the time your first trademark has been in effect, someone else has managed to register a similar mark in the desired new classes.
Therefore, experts recommend conducting trademark registration with a view to business development prospects for 2–3 years ahead to avoid unnecessary expenses on multiple registrations of the same logo.
How do international companies protect their brand if they are not present in all classes?
Well-known brands use a combined protection strategy that relies not only on the Nice Classification but also on the status of a well-known trademark. The main methods include:
- Focusing on key niches: Protection is carried out in classes corresponding to actual operations and in related categories where there is a risk of consumer association.
- Market monitoring: Large companies use the services of agencies to track new applications in order to timely file oppositions against the registration of similar marks.
- Using the “well-known trademark” status: According to Article 6-bis of the Paris Convention, such status provides protection even in classes where the mark is not formally registered, if the use of a similar mark by a competitor could mislead the consumer or damage the brand’s reputation.
What to do if a competitor files a lawsuit to cancel my trademark due to non-use?
If you have received a lawsuit for the early termination of a certificate, it is critical to prepare an evidence base of use. According to Ukrainian legislation, the burden of proving the fact of trademark use lies with its owner.
Your evidence may include:
- Contracts for the sale of goods or provision of services under this brand.
- Primary documentation (invoices, certificates of completion, customs declarations).
- Advertising materials: website screenshots, Google Ads reports, photos of outdoor advertising, product catalogs with dates.
- Product packaging, labels, or receipts where the trademark is clearly visible.
Important: the evidence must cover the period of use over the last 5 years. If you cannot confirm the use, the court will satisfy the plaintiff’s claim, and you will lose legal protection in the contested classes.
How to properly select Nice Classification classes for an IT startup or online service?
For digital products, choosing classes is often more complex due to their multifunctionality. The most common classes for IT include:
- Class 9: Software, mobile applications, digital files.
- Class 35: Advertising services, business management, online retail (marketplaces).
- Class 42: Software development, hosting, IT consulting, cloud services.
Tip: Do not try to cover everything. If you are creating a SaaS solution, Class 42 will be key. If you are selling physical goods through an online store, Class 35 is essential. We recommend getting an individual consultation regarding trademark registration to clearly distinguish service names from their technical specifications to avoid examination refusals.
What is the difference between a “good” and a “service” during registration, and why is it important for protection?
The legal distinction lies in the form of your business activity. Goods are tangible objects (clothing, electronics, food products) that are transferred from a seller to a buyer. Services are activities aimed at meeting a client’s needs (training, consulting, transportation, repairs).
If you register a trademark for “providing consultations” (a service) but only use it on “physical textbooks” (a good), this may create a gap in protection. A competitor could easily register a similar name for goods in your category. Therefore, when compiling the list, you need to clearly distinguish between the manufacturing activity and the service component of your business.
