Suppose you sell clothes through your website and store, so apply for your brand in class 25. And if after a few years you notice that another company uses a similar brand for a clothing store and wants to register, you take action. After all, you have registered your trademark for a reason.
You go to a legal advisor to file a lawsuit against the trademark application of the other party or have a summons drawn up. Gradually you will be asked whether your brand used frequently. You can file a petition in case you are using this particular brand name form last fist five years or so. Your business set up is live online and in a real scenario, you shouldn’t be much worried about this though.
You still get the bottom, because proving regular use has proven to be a problem. The submitted proofs such as sales figures, advertising material, figures of visitors and images of your webshop are insufficient to prove regular use for clothing.
The result is that the trademark you have objected to is still registered and may be used.
What went wrong?
Where quite a lot of objections and oppositions are at stake, is proof of regular use. There is no problem for the first five years after registering the mark. But after five years, trademark rights can only be invoked successfully for the goods and services for which they are registered and used.
In the example of the clothing webshop, the entrepreneur should have registered the brand in class 35 for services from a webshop, and not for clothing in class 25, since the brand was not in use for the garment itself. Due to the formal error in the classification, the case is hopeless, and the actual conflict persists.
The right class is essential
Applying for your brand for the right types is therefore necessary for obtaining, retaining and defending your brand rights. If that goes wrong, the only way to still get the valid trademark registration is to make a new trademark application. You will then receive a new protection date, with which you cannot take action against brands that are from an earlier time.
In the worst case, incorrect classification can lead to the loss of trademark rights, because it is possible to demand cancellation of trademark registration in the absence of regular use. Besides, despite the actual confusion with another brand, it is sometimes not possible to act successfully, and you cannot help but tolerate a confusing brand in addition to your brand.
The four most important principles for classifications:
- Trademark protection only applies to the goods and services described in the ranking. Trademark protection cannot be invoked for goods and services that are not included in the ranking.
- The goods and services description of a brand must be sufficiently clear and precise to make it clear what exactly trademark protection is being requested for. The verification of this requirement is part of the application procedure. If the description does not meet this requirement, a correction must be made. Otherwise, the process will not take place.
- The standard description (the so-called Class Heading) of the Nice Classification does not necessarily protect everything that can fall into that class. Protective cases for smartphones, for example, fall into category 9, but this product cannot be classified under one of the terms in the ‘Class Heading’. If protection is required for this, this product must be explicitly mentioned.
- The product and service description of existing trademark registrations cannot be expanded, but it can be limited. If you have forgotten to include a product or service, and cannot be classified under the terms used, you will have to submit a new trademark application.
What should you take into account when drawing up classification?
- Determine what your activities are and for which services or products your brand is used externally. Think about any future goods and services and include them in the brand application. The classification of a trademark cannot be expanded at a later date. Takes into account the trademark rights of third parties. You may provoke unnecessary objections if you register a similar trademark for similar goods and services. So, take the results of prior brand research with you when you prepare the classification.
- Do not be blinded by the so-called “Class Heading” of the Nice classification. There is much room within that standard description to use your specification.
- A commodity and service description is not your business plan. It is not necessary, and in some cases even disadvantageous, to describe your objectives too accurately. You thereby limit the scope of protection and your possibilities. Specify sufficiently, but again not too much. With possibly descriptive brands, you can increase the chance of acceptance of the registration by applying a well-considered classification.
- Conversely, the description can also underline the descriptive nature, reducing the chance of acceptance. For example, think of NINJA for clothing. If you submit this brand in class 25 for sporty dress, there is a risk that you will get a refusal. If you register NINJA for jeans, the chances are that the brand will be registered.
With the help of TM CLASS, you can search on terms and see in which classes they belong. See this site.
Indeed, in the case of new products and services, drawing up an acceptable description can be difficult. Call in a specialist if in doubt.
A practical example
You have a clothing webshop in which you offer different brands. Importing clothes, doing administration and making advertisements are also essential activities. You also have packaging materials that bear the brand name, and you always add a folder to every order. The most important thing, you think, is that the clothing you sell is made exclusively from natural, organic materials and the production is guaranteed to be fair trade.
The services and products that are important for the classification are those for which the customer comes to you. You do not have to include all services and products supporting them in the rating.
The following are not relevant for the classification:
- import of clothing
- PackagingPackaging materials and leaflets.
- the fact that all clothing is fair trade and made of organic materials
The services of a webshop in class 35 are essential. The fact that the webshop is clothing is a potentially important specification.
Take plans into account
Also, you can take into account any projects. Extending the registration later is not possible, and in the Benelux, you can submit a trademark from 1 to 3 classes at the same cost.
So even though there are no concrete plans for, for example, your clothing brand, class 25 for clothing can be included at no extra cost. To determine the third class, you can look at related products, such as class 18 for bags and leather goods, or class 14 for jewellery, or grade 45 for personal fashion advice and the services of a stylist.
The first five years after registration, you can fully claim the broad protection of trademark registration, even if you do not use the trademark. You can, therefore, register more broadly than the actual use.
Steps for choosing the right class layout
- View what you use the brand for.
- Think about possible future use.
- Take into account the brands that emerge from an availability survey.
- Make sure you don’t compromise the distinctive character of your brand by the description.
- Specify, but not too much.
Do not underestimate the importance of good classification. This determines the extent of your trademark rights. A good brand will last a long time and is worth the investment!