One of the common misconceptions of people who are not “in the know” about trademarks, is believing they will be able to prevent anyone else from using their trademark simply by registering it. While this has some degree of truth, the statement needs some clarification.
- First of all, trademarks have territorial validity – they can only be protected in the jurisdiction where they are registered. We recommend that you check our article on Registered Trademarks and Their Territorial Limitations if you need more information on the subject.
- Secondly, in some jurisdictions, the real ownership of a trademark is determined by who is the first to use it, not the first to file it for registration. It is still highly advisable to register a trademark in those jurisdictions, in order to prevent future conflicts.
- Finally, and this is our topic today, registering a trademark only affords protection for the goods or services included in the description that is filed with the local trademarks office.
Describing your goods or services
A fundamental feature of a trademark application is the description of the products and/or services that the trademark is to be used in connection with. Coming up with a description that is both accurate and in compliance with the requirements of the local trademarks office is one of the most critical and sometimes delicate steps in the process. A trademark filed with an incorrect description, even if it registers, may very well be absolutely useless to its owner or leave the door open for a third party to appropriate the mark for other products or services that may be of interest to the original applicant.
There are many factors to consider, but before anything else, it is vital that you know what you sell – and what you intend to sell. Many times, in lieu of a description of products or services, trademark agents will receive a link to their client's website and an injunction to “have a look and come up with a description”. While this might work for Ben & Jerry’s – a single glance at their website makes it quite obvious that they sell ice-cream – imagine a trademark agent getting into IBM’s website and trying to make an exhaustive list of their products. Not only would this be extremely time consuming, but chances are the agent would miss some of the goods and therefore not include them in the trademark application. Additionally, products that you intend to commercialize in the near future should also be included, and your trademark agent probably can't determine your future plans from your website. In short, you are the one who knows your business best, and so should be the one to provide the preliminary description.
The Nice classification
In order to facilitate the work of both trademark agents and examiners, the majority of countries have adhered to the Nice agreement of 1957, thereby implementing what is now a staple of trademark registration worldwide: the Nice classification.
This classification groups similar products and services into different categories called classes. There are 34 for products and 11 for services. Each class heading will give a general idea of what type of goods or services is included within that same class, for instance:
Class 3 - Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Within each class, the Nice classification provides a non-exhaustive, alphabetical list of items that belong to it. However, the classes are not limited to the products or services listed there. If a product or services is not mentioned in the list, it must be categorized into the corresponding class according to its nature or type.
When filing a trademark application in countries that use the Nice classification, the trademark owner will not only have to provide a description of their products or services, but also determine which class or classes they belong to, and therefore, in which class or classes they want their application to be filed.
It is interesting to note that, as previously mentioned, the Nice classification was created in 1957, and even though it is continually revised and updated – the one currently in use is the 10th edition - it did not exactly predict the exponential growth of the tertiary sector or the technology explosion. This explains the unbalance in the repartition of classes in today’s trademark filing worldwide: in 2014, class 35, which includes business management and administration, was included in almost 10% of applications, while class 9, to which all electronic devices belong, appeared in 6.8% of all filings. (Source: WIPO statistics)
How to choose under what class(es) you should register your trademark
Armed with the accurate and precise list of your products or services you came up with previously, you can then determine the class or classes your application will be filed in – for instance, with our Class Search Tool.
Returning to our Ben & Jerry’s example, for example, if you type “ice cream” in the search box and press enter, you will come up with this:
In this case, it is pretty straightforward. However, maybe your list includes a lot of different products, or the items you included simply do not return any results in the search tool – maybe you used a slightly different vocabulary from the one the Nice classification uses. This is where the assistance of an expert trademark agent will be invaluable, as they have the experience and knowledge to properly classify your products or services and ensure that your trademark protection will be optimal.
Related classes and coexisting trademarks
Since, as previously stated, registering trademarks only affords protection for the goods or services included in the description filed with the local trademarks office, two very similar or even identical trademarks could coexist pacifically in the same territory, provided they are used to commercialize very different products or services.
This is what happens with the Mont Blanc trademarks in France:
Why can they coexist? Because no consumer will ever assume that this Mont Blanc dessert that can be found for a few Euros on the shelves of any French supermarket is produced by the same company that makes those high-end, expensive fountain pens sold in very exclusive shops. The coexistence of these trademarks is therefore not a source of confusion for the average consumer. The marks are registered in different classes for different goods.
Does this mean that trademarks can automatically coexist if the products or services commercialized under them belong to different classes?
It is more complicated than that. While the classification groups similar goods together, it does not mean that goods belonging to different classes cannot be related. For instance, beer belongs to class 32, while all the rest of alcoholic beverages belong to class 33. However, if you saw a bottle of tequila bearing the name “Corona”, you would immediately assume that it is produced by the famous beer company from Mexico. For this reason, it can be said that some products in classes 32 and 33 are intrinsically related, and an application filed in one of those classes can very well receive an objection if an identical or similar trademark already exists in the other class for related products, due to the possible confusion it could cause as to the origin of the products.
Sometimes the relationship between products and services in different classes is more subtle. For example, if I were to try and register a trademark for a pet store called “Tefal”, I would in all likelihood have no problem registering it in class 35 (retail services). However, if my store, bearing that name, sold household appliances and cookware, then you would automatically assume that all the goods inside my store are made by the same company named Tefal that has been producing your electric kettle, toaster and pans (registered in class 11). For this reason, even if Tefal only had the mark registered for the products and not the store, it is very likely that my trademark application for a store that sells the same type of products would not be successful, as it would lead to consumers mistakenly associating one with the other.
That is why even if you do not plan on registering in all the related classes, it might be a good idea to conduct a search for identical or similar trademarks in them, as the existence of such marks may very well be grounds for an objection or opposition to your application.
It is worth mentioning that the policy regarding the coexistence of similar or identical trademarks varies from country to country. For example, in Switzerland the existence of a previous trademark registered for identical products will not be grounds for rejection. In that country, it is the responsibility of the previous trademark’s holder to oppose the new application. On the other hand, in countries like the USA or the UK, examiners tend to give more weight to the relation between products or services than to the class in which a trademark is to be registered. In the end, it is always advisable to seek the opinion of a local expert in order to determine whether a trademark can be registered according to the local practices and policies of each trademarks office.
Different countries, different rules
Even within the framework provided by the Nice classification, there are some differences regarding the way it is implemented in various countries. For instance, China has their own sub-classes within each Nice class, and trademarks can coexist within the same class if the goods or services belong to different subclasses.
The degree of detail and specification needed in a description will also depend on the jurisdiction. While in the European Union you could list your product as “downloadable software” and nothing more, in the USA you would be required to indicate what your software is for. That could make for an extensive list if you produce a lot of different types of software…
These are only some examples of the differences to be considered. All in all, your trademark description should be tailored to the regulations of the trademarks office it will be filed with, and therefore it is advisable to enlist the help of a local trademark agent or attorney.
iGERENT offers trademark services in 180+ countries, for further information visit igerent.com.
Author: Victoire Bauvin Trademark Consultant @ iGERENT