Arguably one of the hardest parts of filing a trademark application is knowing what terms you need to include to protect your business. It is important that you cover the goods/services that are applicable to your business in your trademark application as that trademark application will only protect you for those terms.
What do we mean by the trademark classification?
Across the world, Intellectual Property Offices use a trademark classification that is known as the Nice classification. There are 45 different trademark classes, and each class has its own list of terms. Classes 1 to 34 cover goods and classes 35 to 45 cover services. Each class has a broad heading which explains what the class covers which may be known as the ‘class headings’. Each class contains an explanatory note which explains what goods/services are included in that class along with those that are not included. The goods/services are then listed in alphabetical order. The list of goods/services are not exhaustive so you may need to use a search tool to see which class your goods/services would fall into.
It is vital that you include the correct class/classes to protect your business
It is important to include the correct classes/classes as your trademark application may fail if you do not indicate the correct class/classes when filing the application. You will not be able to add any additional goods/services to your trademark application once this has been submitted.
For example, if you wish to register your trademark for pharmaceutical goods, you would pick class 5. The class 5 heading is ‘Pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for human beings and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’.
What to consider when preparing your trademark application
When preparing your trademark application, you will need to include any goods/services you are currently using the trademark on. It may also be wise to consider where you see your business in 5 years’ time and take that into account. As explained previously, once you file your trademark application, you will not be able to add any additional goods/services to it. However, it may also be wise not to include too many classes in your trademark application. It is important to note that if you do not use the registered trademark on the goods/services you have included in your trademark, this may result in legal action in the future which may incur costs.
All we can suggest is that it is always best to try and cover as many terms as you can in your trademark application to protect your business. If you would like our assistance with this or you are interest in filing a trademark application, you can call us on 020 3475 6751 or email us at info@carterbond.co.uk.
