About Trade Mark Classification

What is trade mark classification?

A trade mark application sets out the goods and services for which protection is sought and these goods and services are divided into 45 different classes by an international trade mark classification scheme known as the Nice Classification. The cost of filing a trade mark application depends on the number of classes that are included.

The Nice Classification divides goods and services into 45 different classes. Goods fall into classes 1 to 34 (for example, printed books fall into class 16 and clothes fall into class 25) and services fall into classes 35 to 45 (for example, education and training services fall into class 41 and technical consultancy falls into class 42). Official registers show the goods and services split by class.

Common misunderstandings

It is essential to appreciate that it is not the case that if you have a trade mark registration in a particular class you have protection covering the whole class. What is important is what goods and services are actually specified in the registration. Sometimes it is quite possible for trade mark registrations for the same mark in the same class to coexist because they relate to quite different goods that happen to fall in the same class.

Furthermore, it is not the case that simply because a trade mark has a registration in one class it cannot be relied on to stop registration or use on goods or services which fall into another class. What counts is whether the goods and services specified are identical or similar, not what class they are in. (If you are interested, the UK IPO has a list of goods and services which require a cross-search in other classes to properly assess similarity: https://www.gov.uk/government/publications/searching-for-similar-trade-mark-goodsservices-in-other-classes/trade-mark-cross-search-list)

Guides to trade mark classification

There are various online guides to trade mark classification. The official Nice Classification guide is comprehensive but individual countries have their own interpretations. For the UK and the EU, the best option is probably TMClass which also has links to classification guides for other countries. UK and EU trade mark classification schemes remain closely aligned. If a trade mark application is to be filed using the Madrid Protocol, based on an initial UK or EU application, it can be advisable to use standard terms from the Nice Classification guide as these are used by WIPO.

Official classification guides for individual countries list standard terms which will be accepted there. In the UK and EU it is not essential to use standard terms, although it can reduce costs where standard terms can be employed. A challenge arises from the use of different standard terms in different countries, for example the US often requires goods and services to be specified more closely than in the UK and EU which can cause UK- and EU- based applicants to face objections to their US applications while US-based applicants often seek unnecessarily narrow trade mark protection in the UK and EU. When preparing a specification for a trade mark application that will be used as the basis for applications in other countries with a priority claim, it is best to plan ahead and take an international perspective.

The rationale behind the trade mark classification scheme

The basis for the international classification scheme has been worked out over many years and those who are familiar with it can follow its rationale which may otherwise appear arbitrary in places. Sometimes the purpose of goods or services may be more important than their structure. For example, sensors usually fall into class 9 with other electronic goods, but if they are for medical purposes they fall into class 10. Industrial chemicals are generally in class 1 but pharmaceuticals are in class 5. For some goods, the materials from which they are made are of primary importance, for example many metal products fall into class 6 where corresponding products made of other materials do not.

Although classification is easy for some products, there are many circumstances where it is not straightforward. For example, some goods and services do not sit in any single class or have variations which can be found in different classes. An example of this is valves which can fall into around 11 different classes depending on their purpose or what they are made from. Computer software falls into different classes depending whether it is downloaded/run locally or provided through the cloud/as “Software as a service”. There are many other examples where classification is not straightforward and experience is required to make the best decisions

Drafting a trade mark specification

When drafting a trade mark specification it is important to start off with a comprehensive list of goods and services which are or will be sold under a trade mark and then review into which classes they fall. Generally, it is possible to find broad terms which cover a range of products and services which can be combined with more specific statements. Choosing lots of multiple overlapping terms can lead to unnecessary expense in dealing with objections, particularly if those applications are used for claiming priority in applications around the world.

A good trade mark specification is broad enough to cover the goods and services of importance to a brand owner, and may err on the side of breadth, but should not be too broad. Excessive breadth may lead to unnecessary disputes and oppositions and it may in time make a trade mark application open to at least partial cancellation due to a lack of use. In the UK a trade mark registration can be invalid for bad faith if it is excessively broad. Trade mark registration should not be used to reserve rights that you don’t intend to use, as you might do with domain names. The trade mark system just doesn’t work that way.

Neither is it necessary to be too obsessed with explicitly setting out every possible product or service that might be sold under a trade mark. This is because trade mark rights extend not only to the goods and services which are specified but also to goods and services that are merely similar, where there is a likelihood of confusion.

At Hindles we provide a comprehensive service in preparing and filing trade mark applications with the UK trade mark registry and WIPO and, through our associates, around the world. Please contact us for details.