How Do I Decide Which Classes To Register My Trade Mark In?
Deciding on which classes to register your trade mark in is not as easy as you might think.
The current Trade Marks Act came into force on 31st October 1994. Since then, applicants have been able to file an application covering more than one class of goods/services. Commonly known as ‘multi-class applications’, they are a useful tool for most companies.
The Intellectual Property Office (IPO) uses a worldwide trade mark classification system that groups together similar goods and services into 45 different classes.
Yes, that’s right. There are 45 classes: goods are in classes one to 34, and services from 35 to 45.
When registering your trade mark under a specific class, you’re preventing someone else from registering the same or similar trade mark to yours within the same class. However, it’s worth remembering that this does not stop someone potentially registering the same or similar trade mark in a different class(es). That’s why its imperative you register your trade mark in all the classes you think are relevant.
To protect your brand, it’s essential you plan and look to the future.
Don’t only focus on goods and/or services that you currently use or intend to use your trade mark on. A registered trade mark lasts for ten years, so think how you may want to expand your brand during this time. This should include classes that you think you’ll want to develop your brand into, saving you time and money.
However, it is important to note that a registered trade mark can be revoked for certain goods if it’s not used for those goods within five years.
How to choose your trade mark classes
The first step is to determine your class by preparing a detailed specification (i.e. description) of the goods or services for which you are using or intend to use the mark.
It’s imperative that this be as clear and precise as possible. It should cover the products and services you currently offer and those that are intended to be of future interest.
The easiest way for you to identify which category your goods or services belong to is to take a look at these areas:
- The function and purpose of the goods or services
- Whether the goods consist of any raw materials
- What activities are involved in the service?
- What is the subject matter or activity of services provided?
A word of warning: don’t make the specification so broad that it covers goods or services that your company does not intend to market. This is because it may lead you to:
- Lose money for each rejected class as there is a filing fee of £50.00 for each specific class
- Be subject to potential claims for non-use of a trade mark
- Involuntarily becoming a trade mark troll
Get your registered trade mark classes right
As we’ve already discussed, the classification list is long, and it can be hard to determine quite where your product or service sits.
When it comes to filing your trade mark application(s), it’s vital you identify all the classes of goods and/or services you want to apply for.
Remember though; there is a separate filing fee to pay for each class.
If you go it alone you’ll risk incurring unnecessary costs (especially if you have to make repeat applications). It’s far better to seek the help of an experienced Trade Mark Attorney who deals with these applications on a regular basis.
Don’t run the risk of incurring unnecessary fees or leaving your brand open to risk. Contact Rachael or Bill Ward for help and advice about which classes you should register your trade mark in using the simple form below.
Ward Trade Marks Limited is a Bury St Edmunds-based specialist trade mark attorney firm.