8 March, 2024

Classes of trade marks

Insights
8 minutes

Imagine you’ve spent countless hours creating the perfect logo, a unique name for your business and a memorable slogan. Now it’s time to secure your intellectual property rights with a trade mark registration. But there is one important detail – the protection you will receive is not unlimited;

It is defined by specific trademark classes that classify the types of goods and services associated with your brand. In Ukraine, as in many other countries, the Nice Classification system is used to organise trademarks. Understanding this system is an important part of the trademark registration process in Ukraine and ensures that your brand receives the comprehensive protection it deserves.

What are TM classes and why they are important for your business

The Nice Classification, created by the Nice Agreement in 1957, is an international system that divides trademarks into 45 different classes. Let’s look at why it is crucial for your business:

  • Goods vs Services: Classification includes:
    • Classes 1-34: Cover a wide range of physical goods, from raw materials used in manufacturing to finished products that customers buy (e.g., chemicals, furniture, and clothing).
    • Classes 35-45: Cover the various services that businesses provide (e.g., advertising, education, insurance, and software development)
  • Definition of protection:when you register a trademark, you are essentially claiming exclusive rights to use that mark in connection with certain goods or services. The trademark classes you choose define the boundaries of that protection. If someone else tries to use a similar mark within the same TM class, you will have legal grounds to stop them.
  • Protect future growth: Think strategically about the potential of your business. If you plan to expand your product range or offer additional services, it is wise to register trade marks in the appropriate classes from the outset. This proactive approach ensures that your brand can grow without facing future conflicts.
  • International consistency: the Nice classification is administered by the World Intellectual Property Organisation (WIPO) and has been adopted by many countries around the world, including Ukraine. This standardisation simplifies the process of securing trademark protection internationally if your business decides to expand beyond one country..
  • Main Search Tool:VOIS provides a useful searchable database called TMclass. This online tool will allow you to explore the various classes and determine the most appropriate for your specific commercial offerings..

For you, understanding the Nice Classification is not just a formality; it directly affects the amount of legal protection your company’s brand will receive. The wrong choice of class can leave critical components of your brand vulnerable to infringement and imitation by competitors.

How to choose the right trade mark class? A guide for business owners

Choosing the right trade mark class is not just a bureaucratic step, but a strategic decision that directly affects the credibility of your brand protection and the ability to grow your business. Here’s a deeper look at how to make this choice wisely:

  • Start by meticulously listing all the products and services you currently offer. Be sure to break down broad categories into more specific ones. For example, instead of just “clothing,” list items such as “men’s casual shirts,” “women’s swimwear,” or “children’s shoes.” Also, think carefully about any services you provide that are inextricably linked to customer service, such as counselling, installation or repair.
  • Outline a realistic development: How do you see your business in the next 3-5 years? Are there new product or service lines that will naturally complement your existing offerings? If there is a realistic opportunity for expansion, it is much more beneficial to register a trademark in these potential classes now, rather than addressing trademark gaps later.
  • TMclass search tool: Your starting point: The WIPO TMclass database is an important resource. Use their search function thoughtfully. Start with obvious keywords related to your business, but also experiment with synonyms or broader terms that consumers can use to find businesses similar to yours. The database will suggest relevant classes, giving you a great starting point.
  • Cost factor: Remember that the cost of trademark registration often depends on the number of classes you choose. It is important to strike a balance between comprehensive protection and budgetary prudence. If you are concerned about cost, focus on the classes for your core offerings as a non-negotiable starting point.
  • When in doubt, seek professional help: Intellectual property law can be complicated. If you have a complex business model, expect to expand quickly, or simply want peace of mind, it’s wise to invest in legal adviceor legal assistance from experienced trademark lawyers. Experts like those at Polikarpov Law Firm offer strategic guidance tailored to your business, ensuring informed class selection decisions and protecting the long-term growth potential of your brand.

Selecting the right brand classes requires both a thorough self-assessment of your business and strategic thinking for the future. This investment of time and attention at the outset can save you significant headaches and costs in the future.

Trademark Classes in Action: Examples from Real Life

Think trademark classes are just abstract numbers? Let’s bring them to life with scenarios showing how they directly affect everyday business:

  • Scenario 1: Technology startup
    You have developed a revolutionary new fitness tracking application. To protect this revolutionary software, you’ll likely register your trademark in Class 9 (computer programs). But don’t stop there! If you plan to sell branded merchandise such as smart watches or fitness trackers that complement the app, consider registering under Class 14 (Jewellery, watches)..
  • Scenario 2: Fashion House
    Your clothing line is all about bold prints and eye-catching designs. Naturally, Class 25 (clothing) is a must. But what if you also offer styling advice to customers? That would fall under Class 44 (beauty and personal care services)!”.
  • Scenario 3: Marketer
    You are a marketing guru helping businesses develop winning campaigns. Class 35 (Advertising Services) is your home. But if you also write content for blogs and create graphics for clients’ social media accounts, consider moving into Class 41 (Education) and maybe even Class 9 (Computer Software) for any proprietary tools you might use.
  • Scenario 4: Education Innovator
    Your online courses teach basic coding skills. This is entirely within Class 41 (Education). However, if you also licence your course materials to other educational institutions, you may need to consider Class 45 (Legal services) for the trade mark of those licensing agreements..

Trademark classes are not limited to the labelling of a product or service. They reflect the different ways a company interacts with its customers. A comprehensive approach to all aspects of your business will help you identify the classes you need for strong brand protection.

Conclusions

Choosing the right trade mark class is a crucial and sometimes complex aspect of protecting your business’s intellectual property. The decisions you make during registration directly affect the scope of protection and your brand’s ability to thrive. Failure to register your trademark in the appropriate classes can leave you open to copycats and competitors, diminishing the value you have worked so hard to create.

While resources such as the Nice Classification System and the TMClass search tool are helpful, seeking the expert assistance of the intellectual property attorneys at Polikarpov Law Firm provides unrivalled value. Their specialised knowledge provides a tailored strategy, comprehensive protection and peace of mind that valuable trademarks are safeguarded.

What are trade mark classes and why do you need them?

An important step before registering a trade mark is to determine the activities for which you will use it. After all, registration of a trade mark is not for all, but only for certain types of goods or services, which are called “classes“. They may somewhat resemble KVEDs for legal entities and FLP, and there are forty-five such classes (thirty-four classes of goods and eleven classes of services)….

Each class includes a certain number of items of the same type of goods or services. For example, class 25 is a class of goods that includes a variety of clothing and footwear, while class 43, on the other hand, contains a list of hotel and restaurant services.

Classes of goods are necessary for those who directly produce or plan to produce such goods;

If you provide services to others, you may want to consider registering for classes of services.

The number and scope of classes directly affects the boundaries of your trade mark protection. That is, your trade mark will be protected only in relation to the specific field of activity that will be provided for by the list of class items.

How to choose the right class for trade mark registration?

An important step before registering a trade mark is to determine the activities for which you will use it. After all, the registration of a trade mark is not in respect of all, but only in respect of certain types of goods or services, which are called “classes”. They may resemble KVEDs for legal entities and FLPs, and there are 45 such classes in total.

Each class includes a certain number of items of the same type of goods or services. For example, class 25 is a class of goods that includes a variety of clothing and footwear, while class 43, on the other hand, contains a list of hotel and restaurant services.

Classes of goods are necessary for those who directly produce or plan to produce such goods. For example, if you have your own clothing brand, you need to register in Class 25, which covers not only the manufacturing process itself, but also the sale and advertising of clothing, underwear and footwear.

In case you are only selling goods of other manufacturers, class 35 of services, which covers trading services, will suffice.

The number and scope of classes directly affects the boundaries of your trade mark protection. That is, your trade mark will be protected only in relation to the specific field of activity that will be provided for by the list of class items.

For example, if you register a trade mark for the manufacture and sale of jewellery in class 14, your trade mark will be protected only for such goods. Therefore, if another person registers the same trade mark, but, for example, for legal services in class 45, you will not be able to oppose it. After all, your activities are completely different and consumers will not confuse such goods and services.

However, registration in one class does not always allow others to register the same trade mark in another class. Thus, there is such a phenomenon as related goods or services. Related goods or services are goods or services which, although in different classes, are partly similar in nature.

For example, class 03 includes non-therapeutic cosmetics and non-therapeutic preparations. Conversely, class 05 covers therapeutic preparations and cosmetics. As you can see, therapeutic and non-therapeutic cosmetics are quite similar products.

Moreover, sometimes, we can find these both types of products in pharmacies or cosmetic shops. Therefore, consumers can easily confuse the manufacturers of such products in a pharmacy or shop.

It is important that the number of classes not only affects the boundaries of protection of your trade mark, but also the state fees for registration. The higher the number of classes – the higher the amount of the state fee.

You can either select only some items from a class or specify all the goods or services of a class when registering. But it is worth remembering that you must use the trade mark for all the goods and services you claim.

But here it is important not only not to go overboard, but also not to forget to select all the goods or services you need. After registration of the trade mark, you will not be able to expand the list of classes or specify an additional class, you will have to start the registration procedure from scratch. Therefore, we recommend that you decide in advance for what activity you will use your trade mark with a perspective of 5 years. This will save you time and resources

How to determine the classes for registration of a trade mark if it covers several types of goods or services?

There is no statutory limitation on electing classes for registration. That is, you can potentially select more than one class for registration;

If your business covers more than one good or service, you may choose the appropriate number of classes for such registration. Generally, goods or services that are similar in nature are located within the same class.

First you need to decide whether you produce certain goods, or whether you still provide services. This will help you to choose in which category (goods or services) you need to look for the required class.

It should be noted that if you only sell certain goods, but do not produce them yourself, you should choose Class 35 services, which is responsible for wholesale and retail trade. There is no need to register your trade mark additionally in the class of goods concerned.

If, on the contrary, you are a manufacturer of some goods and you want to sell or advertise them, you do not need to register your trade mark in the class for sale and advertising, but it will be sufficient to register only in the class of the goods concerned.

Can a trade mark be registered in more than one class at the same time?

A trade mark can be registered for several classes at once. In fact, there is no limit to the number of classes for which a trade mark can be registered.

For example, large global brands often have registered trade marks for all classes of goods and services at once.

Apart from the number of classes, there are no restrictions on the number of items in the list of such classes. That is, you can either select only certain items from the required classes or register a trade mark for the full list;

However, registration of a trade mark for a large number of classes/items of goods and services is accompanied by the following nuances

  1. The number of classes directly affects the cost of state registration fees. The higher the number of classes, the higher the state fee.
  2. If you register a trade mark in multiple classes/for a complete class list but do not plan to use in respect of all activities, interested parties can get your registration cancelled due to non-use.

What if my brand name is in conflict with an existing brand in the same class?

If your trade mark is the same as a trade mark already filed for registration, or a registered trade mark, the following actions are possible (depending on the degree of similarity)

  1. Add additional distinctive verbal or pictorial elements to your trade mark that would differentiate your trade mark from an existing one.
  2. Narrow down and specify the product or service items in your class as much as possible so that they do not overlap with those of an existing brand;
  3. Consider obtaining consent from the owner of another trade mark if your actual activities are different.
  4. If the brand names are identical and the actual operations are completely the same, consider rebranding.
Resources
  1. Law of Ukraine “On Protection of Rights to Marks for Goods and Services”. Link 
  2. Madrid Agreement Concerning the International Registration of Marks. Link.
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