31 October, 2024

Classification of goods and services for TM registration: understanding the Nice Classification

Trademarks
8 minutes

Registering a trade mark (TM) is an important step to protect your brand. However, before you apply, you need to determine which classes ICCT your goods or services fall under. ICTC, or International Classification of Goods and Services, is a system that allows you to classify all possible goods and services for the purposes of TM registration. In this article, we will look at what is and how to choose the right classes for yourtrade mark to ensure maximum protection for your brand.

Section 1: What is ICTC and what is it for?

The ICCS or International Classification of Goods and Services is a special system that is used worldwide to classify goods and services when registering trade marks. It helps to clearly define which goods and services will be protected by your trade mark. In this section we will look at the definition and structure of the ICTU, as well as its importance for TM registration. Understanding these aspects will help you to successfully register your trade mark and provide it with strong legal protection.

1.1 Definition and structure of the ICTS

The International Classification of Goods and Services (ICGS) is a system developed to classify goods and services for the purpose of registering trade marks. It is a hierarchical structure consisting of 45 classes: 34 classes for goods and 11 classes for services. Each class covers a particular category of goods or services and has its own name and number.

Structure of the ILCS:

  • Classes: The highest level of classification. Each class has a number from 1 to 45 and a name reflecting the general category of goods or services. For example, class 9 covers “Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, checking, life-saving and teaching instruments and apparatus; apparatus and instruments for conducting, switching, transforming, storing, regulating or controlling electricity; apparatus for recording, transmitting, reproducing sound or images; magnetic storage media, sound recording discs; compact discs, DVDs and other digital recording media; coin-operated mechanisms; cash registers,
  • Subclasses: Some classes are divided into subclasses that specify the category of goods or services.
  • Groups: At the lowest level of classification are groups, which contain specific lists of goods or services.

Let’s say you want to register a trade mark for clothing. Clothing belongs to class 25 of the ICTU. Within this class there are subclasses, for example, for outerwear, hats and the like. And within these subclasses there are groups for specific types of clothing, such as coats, jackets, hats, etc.

The use of the ICTU allows you to clearly define which goods and services will be protected by your trade mark. This helps to avoid misunderstandings and conflicts with other owners of trade marks.

1.2 The importance of the Nice Classification for trademark registration

The correct choice of theNice Classification is crucial for the successful registration of the trademark and its further protection. It determines the scope of legal protection you will receive and helps you avoid conflicts with other TMs.

Registration of a trademark grants the owner the exclusive right to use it only in connection with the goods and services specified in the application and belonging to the selected classes of the Nice Classification . This means that if you have registered your TM for clothing (class 25), you will not be able to prohibit others from using an identical or similar TM for, for example, software (class 9).

A clear choice of Nice Classification classes helps to avoid conflicts with the owners of other registered trademarks. If your TM is identical or confusingly similar to another TM registered for homogeneous goods/services (i.e. goods/services belonging to the same class of the Nice Classification), the UAPTO may refuse to register your TM.

Imagine that you want to register the TM “Sunflower” for sunflower oil (class 29). If there is already a registered TM “Sunflower” for sunflower seeds (also class 29), the likelihood of refusal to register your TM is very high, as these goods are considered to be homogeneous. However, if TM “Sunflower” is already registered for, for example, furniture (class 20), the chances of successful registration of your TM are much higher, since oil and furniture are not homogeneous goods.

Thus, the correct choice of classes of the Nice Classification is a prerequisite for effective protection of your trademark.

Section 2: How to choose the right classes of the Nice Classification for your trademark?

Choosing the right classes of the Nice Classification is an important stage of trademark registration. It determines the scope of legal protection for your brand. In this section, we will look at practical steps to help you determine the appropriate classes of Nice Classification for your TM, starting with the definition of the types of goods and services and ending with the importance of consulting a patent attorney. Following these tips will help you to ensure maximum protection for your trademark.

2.1 Identifying the types of goods and services

The first step in choosing classes of theNice Classification is to clearly define the types of goods and/or services that you offer or plan to offer under your trademark. This stage requires a thorough analysis of your business and its development prospects.

What do you need to consider?

  • Current products/services: Make a comprehensive list of all the products and/or services you currently offer under your brand name.
  • Future products/services: Think about what products/services you plan to offer in the future. It is important to consider the possible expansion of the range or diversification of the business.
  • Specifics of goods/services: Describe each product/service in detail, indicating its features and purpose. The more detailed you describe your goods/services, the easier it will be to find the appropriate classes .
  • Target audience: Consider your target audience and their needs. This will help you determine which products/services are most important to your business and need the most protection.

If you produce cosmetics, your list may include face creams, body lotions, shampoos, conditioners, make-up, etc. It is important to list not just “cosmetics” but specific types of cosmetics.

A clear definition of the types of goods and services is the basis for the correct choice of classes of the Nice Classification and effective protection of your trademark.

2.2 Finding the right classes in the Nice Classification

After you have identified the list of goods and services that you want to protect with a trademark, the next step is to search for the corresponding classes in the Nice Classification . There are several ways to do this:

  1. Online databases: The most convenient way is to use the online databases ofthe Nice Classification . Many national and international intellectual property organisations provide free access to such databases. You can search them using keywords that describe your goods/services and find the relevant classes. [Include a link to the official online database of the Nice Classification or other useful resources].
  2. Manuals and guides: There are printed and electronic manuals and guides to the Nice Classification that provide detailed explanations of each class and examples of goods/services that fall within it.
  3. Consultation with experts: If you are in doubt about the choice of classes or if your goods/services fall into several possible classes, it is recommended to seek advice from a patent attorney. An intellectual property specialist will help you to properly classify your goods/services and select the most appropriate classes .

Recommendations:

  • Use synonyms and similar words: When searching online databases, try to use different keywords that describe your products/services.
  • Pay attention to the class definitions: Read the definitions of each class carefully to make sure that your products/services really belong to it.
  • Don’t limit yourself to one class: If your goods/services can be classified in more than one class, consider applying for more than one class to ensure maximum protection.

A careful search and selection of the right classes of the Nice Classification will prevent refusal of trademark registration and provide it with reliable legal protection.

2.3 Choosing between several possible classes

Sometimes a good or service may belong to more than one class of the Nice Classification . In such cases, it is important to carefully analyse each class and choose the one that most closely matches the nature of your business.

How to make the right choice?

  • Pay attention to the main function of the product/service: Determine what the main function of your product/service is. This will help you choose the class that most accurately reflects the purpose of your product/service.
  • Analyse the class descriptions: Read carefully the descriptions of all possible classes and pay attention to specific examples of goods/services that belong to them.
  • Consider future business development: If you plan to expand the range of goods/services, choose classes that will cover your future activities.
  • Consider the cost of registration: Registration of a trademark in each additional class of the Nice Classification requires payment of a separate state fee. Therefore, it is important to find a balance between the required scope of legal protection and the cost of registration.

Accounting software can be classified both in class 9 (“Computer software”) and in class 35 (“Advertising; business management; business administration; office work”). In this case, it would be more appropriate to choose class 9, as it most accurately reflects the purpose of the software.

Are several classes better than one?

In some cases, it is advisable to register a trademark in several classes of the Nice Classification . This will provide a wider scope of legal protection and prevent your TM from being used by competitors in related industries. However, it will also increase the cost of registration.

Choosing the right classes of the Nice Classification is a guarantee of effective protection of your trademark. If you have any doubts about your choice, please contact a specialist for advice.

2.4 The importance of consulting a patent attorney

Although it is possible to search and select classes of the Nice Classification on your own , consultation with an experienced patent attorney is highly recommended. A patent attorney is an intellectual property specialist who has in-depth knowledge of the Nice Classification and the trademark registration procedure .

How can a patent attorney help?

  • Professional search of classes: A patent attorney will conduct a thorough search and determine the most appropriate classes of the Nice Classification for your goods/services, taking into account all the nuances of your business.
  • Risk assessment: The specialist will analyse the already registered trademarks and assess the risks of refusal to register your TM.
  • Cost optimisation: A patent attorney will help you to optimise the costs of TM registration by choosing the optimal number of classes of the Nice Classification that will provide the required level of protection.
  • Support of the registration procedure: A patent attorney can fully support the registration procedure of your TM, freeing you from unnecessary hassle and ensuring a successful result.

When is it especially important to consult a patent attorney?

  • Complexity of classification of goods/services: If your goods/services belong to several possible classes or have complex specifics, consultation with a specialist is mandatory.
  • High competition in the market: If your industry is highly competitive, it is important to ensure maximum protection of your TM. A patent attorney will help you develop an effective strategy to protect your brand.
  • Lack of experience in the field of intellectual property: If you have no experience in the field of intellectual property, consulting with a patent attorney will help you avoid mistakes and ensure the successful registration of your TM.

Investing in a consultation with a patent attorney is an investment in protecting your brand and its future success.

Conclusion.

The Nice Classification of Goods and Services (ICGS) is an important tool that helps to determine the scope of legal protection for your trademark. The right choice of classes provides effective protection for your brand against unfair competition and helps to avoid conflicts with other brand owners .

It is important to remember that the selection of classes of the Nice Classification is a crucial stage that requires attention and careful analysis. If you have any doubts about your choice, we recommend that you seek advice from a patent attorney.

For more information on choosing a trademark name and the cost of registration in Ukraine, we recommend that you read the articles “How to choose a memorable trademark name” and “The cost of trademark registration in Ukraine: what determines the price?” 

Can I apply for TM registration in only one class of the Nice Classification

Yes, you can apply for a trademark (TM) registration in only one class of the Nice Classification. However, this may limit the scope of your trademark and leave you without protection in other industries.

For example:

  • If you produce clothes for children, you can register a TM only in class 25 of the Nice Classification (“Clothing; footwear; headgear”). However, if you plan to expand your business and start producing toys for children, you will have to re-apply for TM registration in class 28 of the Nice Classification (“Toys; sporting goods; devices for physical exercises and entertainment; gaming machines; slot machines; materials for playing”).

Recommendations:

  • Assess your business development prospects: If you are planning to expand your business, it is better to register a TM in several classes of the Nice Classification to ensure maximum protection for your brand.
  • Contact a patent attorney: An intellectual property specialist will help you correctly identify the classes of the Nice Classification that meet your needs and goals.

Remember that registering a TM in several classes of the Nice Classification may increase the cost of registration, but it will provide you with greater protection for your brand in the long run.

Is it possible to change the classes of the Nice Classification after trademark registration

Unfortunately, it is not possible to change the classes of the Nice Classification after the trademark has been registered.

Once your trademark has been registered in certain classes of the Nice Classification, it grants you the exclusive right to use it only in connection with those goods/services that fall within those classes.

If you want to extend the scope of your trademark to include other goods/services that fall within other classes of the Nice Classification, you will have to:

  1. File a new trademark application: This procedure is similar to the previous registration and involves checking the freedom of the name, filing an application with the UkrainianTrademark Office, paying the state fee and undergoing examination.
  2. Obtain a new certificate: If your application is approved, you will receive a new trademark certificate covering the new class of the Nice Classification.

Important:

  • Make sure that the new name does not conflict with other registered trademarks.
  • Contact a patent attorney: An intellectual property specialist will help you to properly complete the application and avoid mistakes that may lead to a refusal of registration.

Changing the classes of the Nice Classification after TM registration is a complex and time-consuming process. Therefore, it is better to foresee all possible directions of your business development at the stage of filing an application for registration and choose the appropriate classes of the Nice Classification right away.

What is the difference between national and international trademark registration in terms of the Nice Classification?

Although the Nice Classification system is unified for the whole world, the process of TM registration may differ from country to country. From the perspective of the Nice Classification, the main difference between national and international registration is as follows:

National registration:

  • Application is filed in a specific country: You choose the Nice Classification classes that correspond to your goods/services for a specific country.
  • TM protection is limited to this country: Your TM will be protected only in the country where you registered it.

International registration (under the Madrid Protocol system):

  • The application is filed with UKRNOVI, but covers several countries: You choose the classes of the Nice Classification and the countries in which you want to register your TM.
  • TM protection applies to all selected countries: However, additional fees are required to obtain protection in each individual country.
  • The registration process takes longer: International registration takes longer than national registration.

Important:

  • It is necessary to take into account the peculiarities of the legislation of each country: some countries may have additional requirements for the classification of goods/services.
  • Consultation with a patent attorney: An intellectual property specialist will help you choose the best option for TM registration and properly complete the application.

The choice between national and international TM registration depends on your goals and business strategy. If you plan to expand your business internationally, international trademark registration is the best solution.

Is it necessary to specify a specific type of goods/services in the application for TM registration?

Thus, the application for TM registration must specify a specific type of product/service.

For example:

  • It is not enough to specify “clothes”, you need to specify specific types of clothes: “coats”, “jackets”, “dresses”, “trousers”, etc.
  • It is not enough to specify “software”, you need to specify the specific type of software: “accounting software”, “anti-virus software”, etc.

Why is it important?

  • Accurate description ensures greater protection of your brand: If you indicate a specific type of goods/services, you will be entitled to use your TM only for this product/service, which will limit the possibility of others to use a similar TM for other goods/services.
  • Correct description reduces the risk of refusal of registration: If your application contains too general a description of goods/services, then the UAPTO may refuse registration, as your TM will not be sufficiently distinctive and may conflict with other registered TMs.

Recommendations:

  • Study the classes of the NiceClassification: In addition to identifying the specific type of goods/services, make sure you have correctly identified the class of the Nice Classification to which your goods/services belong.
  • Contact a patent attorney: An intellectual property specialist will help you to correctly formulate the description of goods/services in the application for TM registration to ensure maximum protection of your brand.

The correct description of goods/services in a TM registration application is a key factor for successful registration and effective protection of your brand.

What should I do if my goods/ services belong to several classes of the Nice Classification, but I am not sure which ones to choose

If you find yourself in this situation, don’t worry! It’s a fairly common problem, especially for businesses with a wide range of products/services.

Here’s what you need to do:

  1. Analyse the description of each class of the Nice Classification: Carefully read the descriptions of the Nice Classification classes that correspond to your goods/services. Pay attention to the specific examples of goods/services that are listed in the description of each class.
  2. Define the main function of your goods/services: What is the main purpose of your goods/services? What problem do they solve? This will help you determine the class of the Nice Classification that most closely matches the nature of your business.
  3. Consider the future development of your business: If you plan to expand the range of goods/services in the future, it is important to choose the classes of the Nice Classification that will cover your future activities.
  4. Contact a patent attorney: An intellectual property specialist has in-depth knowledge of the Nice Classification and experience in risk assessment. A patent attorney will help you determine the most appropriate classes of the Nice Classification, taking into account the specifics of your business and the purpose of the TM registration.

Important:

  • Don’t be afraid to choose several classes of the Nice Classification: If your goods/services belong to several classes, it is better to register the TM in all of them to ensure maximum protection for your brand.
  • Estimate the cost of registration in each class of the Nice Classification: Registration of a TM in each additional class of the Nice Classification requires payment of a separate state fee. Therefore, it is important to find a balance between the required scope of legal protection and the cost of registration.

It is always better to be safe and choose more classes of the Nice Classification than to regret not doing so.

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