Which Class Should I File My Trade Mark In?

Posted by on May 24, 2014 in FAQs | 0 comments

The scope of goods or services (the “specification”) claimed in each trade mark application must be clearly defined in order for the application to be approved and for the trade mark to be registered. trade mark  To this end, reference to the classification of goods and services set out in the International Classification of Goods and Services for the Purposes of the Registration of Marks (the “ICGS”) is vital.

First established in 1957, the ICGS applies to all member countries of the Nice (pronounced as “niece”) Agreement.  The use of the ICGS is mandatory for national registrations of trade marks in member countries.  Over the years, the ICGS has gained popularity and is now used by a number of non-member countries as well as in the international registration of marks effected by the WIPO, the African Intellectual Property Organisation, the African Regional Intellectual Property Organization, the Benelux Organisation For Intellectual Property and the European Union Office For Harmonization In The Internal Market (Trade Marks And Designs).

The latest edition of the ICGS recognises trade mark 34 distinct classes of goods and 11 classes of services in which all goods and services can be classified under.  Classification is guided by the material and purpose in which the goods or services is usually applied towards.  While it is true that 2 identical trade marks can co-exist if they are filed in different classes, much will also depend on the trade channels in which the goods are sold or services are rendered as well as whether these goods are sold or services rendered side by side.

If you offer more than one type of goods and services you may need to cover multiple classes for adequate protection. Sometimes, business owners also cover the goods and services of classes that are ancillary to those that your company offers. It is however cost prohibitive for the average business to cover all 45 classes. Finding out which class or specification to claim is a question of strategy as much as it is a question of cost.

Consider the following factors:

1. Which are your primary markets and secondary markets?

A primary market refer to the countries and jurisdictions in which your goods are sold or services are rendered mainly or predominantly. It can also refer to the jurisdiction in which your manufacturing base or primary work force is located.  Essentially, it is a country or jurisdiction of financial importance to your business.

A secondary market refer to the countries and jurisdictions where you plan to enter next or where your business already entered but has yet to either gain substantial sales or commenced operations.

It is sensible to prioritise the protection of your trade mark in your primary markets.  However, consider if there could be strategic business decisions which may compel you to seek protection in any secondary market ahead of a primary market. Such reasons could include pre-empting a competitor or laying the foundation for a franchise.

2. Present and future considerations

Specifications once filed in an application can only be amended at the direction of the examining authority.  Even so, amendments cannot have the effect of extending the scope originally claimed for.  Decide for yourself the level of specificity in the specification but bear in mind that the specification must be clear and not vague.

3. What is your budget?

Filing multiple trade mark applications can be costly.  It is prudent for you to count your costs before embarking on any trade mark registration exercise.  Find out whether your business is eligible for grants and subsidies.

Contact us if you are thinking of trade marking your business and read more on the 45 different types of trademark classes here.

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