Written by Samuel O’Toole | May 23, 2022
Trade marks are wonderful.
In the fast-paced world of business, they can protect your brand – helping your business to maintain its competitive edge by preventing others from using your branding without authorisation.
They’re great for consumers too, as they allow the everyday shopper to determine where a product or service comes from. This way, we know that if we buy a product with a certain brand on it, it will be of the same quality and origin each time we purchase it.
However, there are instances where multiple companies can own very similar trade marks. And, despite the overlap, as consumers, we’re still well aware these are entirely different brands. For example, consider the term ‘Penguin’. The word has been registered as a trade mark for at least three different companies:
How can this be?
Well, it all comes down to the trade mark classification system used by intellectual property offices. In this blog post, we will delve into the trade mark class system, its purpose, and how it works.
The trade mark class system in the UK categorises all goods and services into 45 different classes. Goods are classified from Classes 1 to 34, covering various physical products. Meanwhile, services fall under Classes 35 to 45, encompassing intangible offerings.
Classes 1 to 34 cover a broad range of tangible products, including chemicals, pharmaceuticals, cosmetics, machinery, vehicles, clothing, and more. Each class groups related goods together. For instance, Class 9 includes computer hardware, software, and scientific apparatus, while Class 25 pertains to clothing, footwear, and headgear.
Classes 35 to 45 encompass different types of services. For example, Class 35 relates to advertising, business management, and retail services. Class 41 covers education, entertainment, and sports activities. Class 45 involves legal services, security services, and personal and social services rendered by others.
The UK trade mark class system is based on the international classification known as the Nice Classification. This system is widely recognised and used by multiple countries worldwide. It provides a standardised approach to classify goods and services, making it easier to register and protect trade marks globally.
When applying for a trade mark, the applicant is required to apply for the mark in connection with the relevant goods and services, which then need to be described and put into the correct class. If the application is granted successfully, the trade mark will protect that mark in connection with those goods and services. So, if I have the brand “XYZ” registered for books in class 16, I should be able to stop third parties from using that brand in connection with books, but not necessarily for other goods or services.
This is why “Penguin” can be registered as a trade mark by several companies. Each registration is under a different class.
In many cases, businesses offer goods or services that fall under different classes. For example, a fashion designer might offer both clothing as a product and retail services in relation to clothing. In such instances, applicants can submit a multiple-class application, covering all relevant classes. This approach streamlines the registration process and simplifies the management of trade mark portfolios. You cannot amend a trade mark application once it is registered, so be sure to select all relevant classes to your business before submitting your application.
Getting your trade mark classes correct is very important for a number of reasons, not least that as part of a trade mark application the fees are calculated on the number of classes applied for. Additionally, if the wrong term is put into the wrong class at the application stage, the Intellectual Property Office will ask you to move that term into the correct class, which can mean additional paperwork and additional costs.
Furthermore, getting the goods and services wrong can have disastrous consequences. Once a trade mark is filed, it is not possible to add new classes to the application. This is only possible by way of a new application, which can mean that if any competitors get in there before you, they may be able to block your application. In short, it could mean that you are able to own the trade mark for your brand in connection with books in class 16 but not writing services in class 41.
Navigating the intricacies of the trade mark classification system can be daunting. To ensure accurate classification and maximise trade mark protection, it’s important to work with a specialist lawyer.
All of the team at Briffa are experts in trade mark law. We know how to future-proof your brand and we can advise you on what trade mark classes would be beneficial for your business. Why not get in contact for a free consultation to discuss the world of trade mark classes and learn how we can help your business?
You can contact us by filling out the form below.
This post was written by Cassine Berring and Samuel O’Toole.
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