So you’re over the first hurdle: you know what your trademark will look like (you’ve come up with a great name and/or logo) but now you must consider the list of goods and services you wish your trademark to cover.
Goods and services are split up into classes for the purposes of trademark applications. The more classes in a trademark application the greater the filing cost. The classes are governed by the ‘Nice’ classification system: an internationally agreed classification of goods and services for registering trademarks which dates back to 15 June 1957 when an agreement was signed in Nice, France.
Similar goods and services are grouped together into 45 different classes. Each class contains a list of pre-approved terms which cover all the goods or services included in that class. Goods are listed in classes 1 to 34 and services are listed in classes 35 to 45.
To give you an example of a classification for say, denim jeans, then the Nice class would be class 25 which covers clothing, footwear and headgear. Whereas if you wish to cover toys you would need class 28 and for software as a service you would file in class 42.
It is important that the specification of goods/services adequately covers your interests as goods/services cannot be added to an application after filing.
Whilst you can at any time file new applications for the same mark covering the same or different goods/services it is also advisable to consider the types of goods/services that you may want to use your trademark for in the future. This can both reduce overall costs and safeguards your future interests.
A registered trademark can last indefinitely provided it is renewed every ten years, so think about how your brand might develop over this time. However, don’t forget that a registered trade mark can be revoked if it has not been used for five years, so just obtaining a registration will not provide you with everlasting rights unless the mark is genuinely used in the course of trade for the goods/services covered.
An example: you file an application to register your trade mark in just class 20 (Furniture, mirrors, picture frames) and then decide to expand your brand into rugs, which is covered by class 27.
As the application you have filed only covers you for class 20, you have to file another application to register your trade mark in class 27. You could have avoided the extra cost of making a new application by including both classes in the first application. You’ll also have to pay two separate renewal fees.
For more information on the trademark classes click here:
As part of London IP’s trademark filing service we can classify your goods and services for you and provide you with a draft specification of goods and services for your approval. If you require assistance with any application please do not hesitate to contact us.