Introduction of goods and services linked to a trademark: One of the common myths of people who are ignorant of trademarks is that they can prohibit someone else from actually recognizing their mark. While this is true, there needs to be some clarification in the statement.
— First of all, marks have territorial validity – only when they are licensed can they be covered in the field of jurisdiction. If you need more details on the issue, we suggest that you check our registered marks item and its territorial limitations.
Furthermore, in some countries, the first to use it is not the first to register it for registration decides the true owner of the trademark. To avoid potential disputes, it is also strongly recommended that a trademark be licensed in those jurisdictions.
— Ultimately, as is our focus today, it is only possible to protect the products or services found in a definition filed at the local trademark office by registering a trademark.
Describing your goods and services associate trademark
The definition of the goods and/or services to be used in conjunction with a trademark application is a fundamental aspect of that application. This is one of the most important and often difficult steps in the process to create a definition that is reliable and compliant with the requirements of the local trademarks office. An improperly identified trademark may very well be of no value to its owner even though it licenses or may leave the gate open for a third person to seal the mark for certain goods and services associate trademark which may have an interest in the original applicant.
There are several variables, but above all, you must know what you are selling – and what you intend to sell. Often, trademark agents receive a link to their client’s website and an order to “see and come up with a summary,” rather than a description of the goods and services associate trademark. Although this could work for Ben and Jerry – it is very obvious from a single view of her website that you sell ice cream – imagine a trademark agent going on the website of IBM and attempting to list their goods in great detail. It will not only take an incredibly long time, but the agent is also likely not to include any of the products in the trademark application. Also, products you are planning to market should be included shortly and your trademark agent may not be able to define your plans from your website. You are the one who knows best about your company, so you should define it in advance.
THE NICE CLASSIFICATION
The majority of countries have adhered to the 1957 Nice Agreement to promote the work of all trademark agents and examiners by introducing what is now worldwide a simple trademark registration: the Nice classification.
Specific goods and services associated trademark are classified into separate classes in this grouping. 34 products and 11 services are available. Each class heading provides an overview of what kind of goods and services associated trademark is in the same class, for example:
Class 3 – Cleaning, polishing, and abrasive preparation; perfume products, essential oils, cosmetics, hair lotions; toothpaste.
For each class, a non-exhaustive, alphabet list of its items is given in the Nice classification. The groups are however not restricted to the goods and services associated trademark mentioned. If a good or service is not specified, it should be categorized according to its nature or form into a corresponding class.
The trademark owner shall not only define their goods and services associated trademark in countries which use the Nice Classifying, but also specify which classes or classes under which classes or classes they want their application to be registered.
TOP 3 TRADEMARK SIZE: TOP 3 CLASSES:
Class 35 – Advertising, corporate governance, corporate administration, and office functions.
Class 9-science, photographic, measuring devices, software, and computers.
Class 25 – Clothing, shoes, headgear.
Interestingly, the Nices Classification was established in 1957, as mentioned above, and while constantly being revised and updated – the one currently being used is the 10th edition – the exponential growth or explosion in technology in this sector did not exactly predict it. In 2014, class 35, which contains corporate management and administrative services, was included in approximately 10% of applications, while Class 9, which covers all electronic devices, was included in 6.8% of all filing. This explains the disparity in the class violation in today’s label filing worldwide. (Source: statistical data from WIPO)
If you want to enter your trademark under what class(s)
You will then decide the class or classes in which your application should be submitted with a complete and comprehensive list of your previous goods and services associated trademark-e.g. with our class search tool.
For example, if you enter “ice cream” into the search box and press Enter, returning to our Ben & Jerry example, you are going to arrive with this:
It’s very clear in this situation. Nevertheless, your list may include several different things, or your items simply won’t return search results – maybe you use very different language from the one that Nice uses. Without the expertise and the know-how to accurately identify your products or services and ensure that your trademark protection is effective, the support of a professional trademark agent can not be estimated.
Related classes and coexisting trademarks
As previously mentioned, only the products or services covered by the definition filed with the local trademark office can be protected in registering trademarks, so two very similar or even identical trademarks may co-exist peacefully in the same region provided they are used to sell completely different goods and services associated trademark.
The Mont-Blanc trademarks in France are as follows:
Why can they live together? Because no consumer will ever assume that the high-end, expensive fountain style, which may be found on the boards of any French supermarket for a few euro, will be produced by that same company. Consequently, the coexistence of such symbols does not give the average user a source of uncertainty. For different items, the marks are registered in various grades.
Does that mean, if the products or services marketed under them belong to different classes, that marks can automatically coexist?
It’s much more difficult. Although the grouping groups together contain similar products, it does not mean that products from different classes should not be identified with them. For example, beer belongs to category 32, whilst all other drinks are of category 33. However, you might believe that if you saw a bottle of tequila called “Corona,” it was made by the popular Mexican beer company. For this reason, it may be argued that certain products in classes 32 and 33 are inherently related, and an application filed in one of those classes can very well trigger an appeal if an equivalent or similar trademark already exists in the other class of related products, due to the potential misunderstanding it may create as to the origin of the goods.
Often the relation between goods and services associated trademark is more subtle in various groups. For starters, I would probably not have trouble registering a mark in class 35 (retail services), if I were to try to register it with a pet store named “Tefal.” Nevertheless, if you presume that my shop, bearing that name, has sold homemakers and cookware, all the products inside my shop are made by Tefal who manufactured your electric kettle, toaster, and pans (registered in class 11). There is a significant possibility that my trademark application for a store selling the same type of goods would not be approved, even though Tefal had licensed the product and not the company, as it could lead to customers being confused wrongly with others.
This is why it may be a good idea to search for identical or similar trademarks in all the classes concerned, although you do not intend to register them since there could very well be reasons for objection or opposition to your request in the existence of such marks.
It is worth noting that there is a disparity between countries in policy on the coexistence of similar or identical trademarks. In Switzerland, for example, no basis for refusal will be given to the existence of a previously registered trademark for similar goods. The previous trademark holder is responsible for challenging the new application in that region. On the other hand, the relationship between goods or services appears to be more important than the class in which a trademark is to be licensed in countries like the U.S. or the UK. In the end, the opinion of a local expert is often advisable to decide, in compliance with local procedures and policies of each marking office, whether a trademark should be licensed.
Various countries, various rules
There are several variations in the way it is applied in different countries right within the limits of the Nice classification. For example, in China, each Nice class has its sub-classes. If goods and services associated trademark belong to different sub-classes, a trademark can coexist within the same class.
The degree to which a definition involves information and requirements will also depend on competence. In the European Union, though your product may be classified as “downloadable software,” you will be expected in the United States to say for which reason your software is. If you produce many different software types, this could make for a comprehensive list …
These are just a few examples of the differences to be taken into account. In summary, the definition of a registered mark should be adapted to the regulations of the registered registration office and, thus, assistance from a local registrar or attorney should be required.