Navigating the Nice Classification System for Trademarks

What are classes when talking about registered trademarks?

Before registering a trademark, one must first define the goods and/or services the trademark is going to be used for. With every trademark application, a clear description of goods and/or services must be provided.

Trademark: APPLE - Description of goods/services: Computer hardware

Trademark: AMAZON - Description of goods/services: Electronic retailing services

Different goods or services are grouped into different classes; therefore, depending on what goods or services one is applying for, registration should be sought in one or more classes.

The Nice classification (NCL) is the standard classification system that is used by the overwhelming majority of countries around the world. The classification, established by the Nice Agreement (1957), establishes 45 classes. Classes 1 through 34 are for goods and classes 35 through 45 are for services.

Trademark: APPLE - Description of goods/services: Computer hardware - Class: 9

Trademark: AMAZON - Description of goods/services: Electronic retailing services - Class: 35

Every single good or service imaginable can be classified into one of the 45 classes, whether because it is expressly included in the predefined list of goods/services of the class, or because the nature of the goods/services corresponds to the general description of the class.

You can determine in what class a specific good/service corresponds to by searching the Nice Classification.

What is the difference between goods and services in a trademark?

Goods are tangible. They consist of products that one may purchase to use or consume. Depending on the nature of the good or product, it may be consumed upon its first use (e.g. chocolate bar, banana, soda water) or may be used on more than one occasion, where the product does not lose its original characteristics (e.g. pen, shoes, motorcycle).

Services are intangible. They are actions provided by a third party that may require a special skill or resource. When paying for a service, one does not own the service, only the result of the action provided by the service provider (e.g. haircut, painted wall) or the right to the provision of the service (legal advice from an attorney, a room in a hotel, telephone line provided by a telephone company).

Can I apply for a trademark that has already been registered by a third party for different products or services (classes) than the ones I am interested in registering for?

Trademark registration is granted in respect to determined goods and/or services (classes). Therefore, although an identical trademark is already registered, if one applies for an identical trademark in a different class, registration could be granted.

However, registration offices and examiners will analyze if such trademarks may confuse consumers into believing that the products or services come from the same trade source. Part of this analysis consists in checking if the goods and/or services of both trademarks are related or offered in the marketplace in similar channels or placement. If the examiners consider that consumers would believe that both trademarks come from an identical source, the application will receive an objection. Furthermore, the owner of the previously registered trademark may present an opposition to the registration based on the possible confusion caused to consumers or the possible association that consumers may believe to exist between the owners of both trademarks.

In the case of well-known trademarks, protection usually transcends class protection. Although Coca-Cola does not have their trademark registered for women’s makeup, if someone other than The Coca-Cola Company were to file a trademark for "Cola-Cola" for makeup, the application would almost certainly be refused.

Select your goods and service description and classes carefully

When applying for a trademark, you will have to determine in what class or classes you wish to register and for which specific goods and/or services.

To do so, just answer these questions: what goods will you sell or what services will you provide? What are you going to promote with your trademark? Answering these questions will determine your goods and services, and with this you will be able to define the classes your trademark will have to be registered for.

The vast majority of countries use the Nice Classification System; nevertheless, many country offices have their own predefined list of goods and services that usually follows identical or similar criteria to that of the Nice Classification System. Our Trademark Consultants and local attorneys will assist you in defining what description of goods and/or services is most adequate for you. This will allow you to reduce the probabilities of receiving objections caused by inadequacy of the provided description.

Check our blog article to find out more about the importance of the description of good and services.