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Q: 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 <ol> <li>The number of classes directly affects the cost of state registration fees. The higher the number of classes, the higher the state fee.</li> <li>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.</li> </ol>

Question 1

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

Accepted Answer

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.

Question 2

How to choose the right class for trade mark registration?

Accepted Answer

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

Question 3

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

Accepted Answer

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.

Question 4

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

Accepted Answer

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

The number of classes directly affects the cost of state registration fees. The higher the number of classes, the higher the state fee.
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.

Question 5

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

Accepted Answer

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)

Add additional distinctive verbal or pictorial elements to your trade mark that would differentiate your trade mark from an existing one.
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;
Consider obtaining consent from the owner of another trade mark if your actual activities are different.
If the brand names are identical and the actual operations are completely the same, consider rebranding.

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