Today we are going to address one of the most complex topics of trademark registration: finding out the relevant classes for your business. In this blog we are going to answer the following five questions:
- What are classes?
- How many classes are there?
- How do I find out which are the right classes for my business?
- How many classes do I need?
- Can I avoid all the hassle and register in all 45 classes?
- What happens if I select the wrong classes?
Let me highlight one thing right away: you do not have to dig into this. Our team is happy to discuss your project with you and prepare an easy to understand report listing the classes that are to be considered.
You do want to get some more understanding? Then let’s go for it.
1. What are classes & terms?
Trademarks always have to be put in a context. Naming a computer company “Apple” creates a unique and distinctive appearance. There is no problem, giving that company the right to deter other computer companies from using the word “Apple”. Things look different if you would grant a fruit dealer the exclusive right of using the word “Apple”. Such would make it impossible for anybody else to advertise for apples.
Hence, one had to establish rules. In order to assign different rules for different categories of products and services, classes & terms were created. Every product or service imaginable has been defined by as many terms as possible. In 1957 the Nice Agreement determined which terms are grouped into which classes. By now, more than 150 registrars use the Nice Classification. So, one can say it is the international standard for trademarks.
2. How many classes are there?
The Nice Classification spans 45 classes and more than 70,000 terms. Classes 1 to 34 classify products, classes 35 to 45 classify services. If you want to review all classes, you can find them on our website. Be warned though, they are not as simple to use as they might appear on the first view.
3. How do I find out which are the right classes for my business?
There are basically two ways. Either you really dig into the topic (which will keep you busy for the next year) or you speak with us. Tell us how you plan to use your trademark and we will prepare a professional yet easy to understand report.
4. How many classes do I need?
Most clients running the searches themselves end with just one class and less than five terms. However, when done properly, a classes & terms analysis usually reveals 3 to 5 classes and around 200 terms that are relevant to the business.
5. Can I avoid all the hassle and register in all 45 classes?
No, but yes, but no.
Let me start by explaining that nobody holds a trademark registration in all 45 classes, not even Alphabet/Google, who are active in so many industries. The top three reasons against this idea are:
If you want to apply for all 45 classes, you will see your fees explode.
Your trademark will have to pass the regulation for each and every class, which will take years.
You can only gain protection if there is something to protect, meaning you would have to become operational in all 45 classes. In other words: you cannot hold a trademark for shoes if you actually produce soft drinks.
6. What happens if I select the wrong classes?
Selecting a wrong class usually results in one of these three scenarios.
#1 Your trademark application may be rejected. That is about the least of your problems as you only lose time and some fees.
#2 Your trademark may be registered at first but then be revoked after some years when the mistake is noted. This is considerably more inconvenient, as you have built some brand reputation and suddenly find yourself unprotected.
#3 You may have registered in a correct class, but missed one that is also important. This is the worst case scenario as you will only notice it when entering into litigation at some point in the far future. By that time, you will have invested a considerable amount of time and money into your brand. Finding yourself unable to fight fraudsters in a class that had been overlooked but now turns out to be actually important is the true nightmare.
I hope you found this article informative. As I mentioned right at the beginning, you do not have to go for the hassle to research the relevant classes on your own. We are more than happy sharing our knowledge and experience with you. Just give us a call at +44 20 39 659 800 or submit the below form and get the ball rolling. Rest assured: we do not have the clock running with initial enquiries and there are no strings attached to our free search program.