A mark can only be protected in connection with the goods or services applied for. Therefore, it is of great importance that you register your trademarks in all classes in which you intend to use them.
This is why, for example, the word APPLE can be used without confusion by different companies for different products such as the widely known APPLE computer brand (now Apple INC) and the APPLE corps brand (owned by The Beatles).
The indication of goods and services corresponds to one of the essential characteristics of a trademark (Article 4(a) EUTMR). "Goods" are products, generally tangible items like plastics, food or clothing. "Services" are services provided to others, such as legal services, restaurant services or administrative services. Most countries in the world employ the NICE classification system (see below)
The descriptions of goods or services cannot be expanded after filing – the only way to expand goods and services classification is to file a new application. Select a too-narrow classification and you run the risk of leaving out important goods or services. Select a too-wide classification and you risk being caught up in a huge legal fight.
Now let’s have a look at the Nice Classification system. Goods and services in respect of which trade mark registration is applied for are classified in accordance with the system of classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957 (the ‘Nice Classification’). The Nice Classification is administered by the World Intellectual Property Organization (WIPO) (Article 33(1) EUTMR).
The Nice Classification establishes a classification for goods and services for all types of trademarks (it has 34 classes for goods and 11 for services) and simplifies the trademark application process by ensuring that the goods and services covered by an application are classified in the same manner in all trademark offices adhering to the classification. In addition, Article 33(2) EUTMR requires every list of goods and services to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators to determine the extent of the protection sought.
As a system aimed at reflecting market needs, the Nice Classification is updated on a regular basis. Minor improvements are published every year in versions of the current edition, while significant changes are incorporated in a new edition every 5 years. Since 2013, the Nice Classification is revised once a year and a new version of each edition is published annually and enters into force on 1st January. A revised version of the current, eleventh edition became effective on 1st January 2022.
When filling in your trademark application form, you are required to indicate the goods and services for which you wish to register your trademark, and to group them according to classes as explained above.
The list of goods and services may be restricted or amended, but as stated above cannot be extended (Article 49 EUTMR).
This is the reason why, if you have registered a trademark for a particular product and want to use it for a product in a different class, you will have to file a new trademark application.
As an example, if your business is producing industrial oils and greases, your trademark application should be made for the corresponding goods in class 4. If, however, you wish to market other products such as non-medicated cosmetics and toiletry preparations using the same trademark, you will have to register the trademark for the corresponding goods in class 3.
An attorney specializing in the field of IP can assist you in finetuning such an important task in order to be able to secure protection, distinction and exclusive use of your trademarks.
Michael Kyprianou & Co LLC has a leading Intellectual Property practice with a team of experienced lawyers who are able to advise and assist clients in relation to both contentious and non-contentious IP matters. If you need any advice in relation to Intellectual Property rights, please contact our Head of IP, Agis Charalambous, at email@example.com or by phone at +357 22 447777