Trademark class is a crucial part in a trademark registration, yet its importance has often been overlooked by many applicants. If not specified properly, a poorly-written class description might not provide adequate protection to your trademark registration.
In this article, we will explain what trademark class is, why it is important to your application and how you should deal with it to ensure your daily trademark business usage is weIl-covered.
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What is Trademark Class?
Trademark classes, ranged from Class 1 to Class 45, are classified according to different kind of Goods and Services. Each of the classes contains descriptions of similar products or services.
For example, in Class 25, a class for clothing products, you will find item descriptions like "T-Shirts", "Jeans", "Jackets" etc.; while in Class 43, a class for business of restaurant and providing accommodations, you will find item descriptions like "Sushi bar", "Hotel" etc..
What is the Purpose of Trademark Class?
The purpose of having trademark classes is to establish a clear area of usage of a trademark, and more importantly, the limitation of protection of trademark registrations. Imagine if a trademark registration automatically covers all goods and services, that would be an unreasonably wide scope of protection as it would allow monopoly of a certain in all kind of businesses even though it is not used such widely. Besides, soon we would then run out of trademarks that we could use. For example, if a "Ming Kee" restaurant owner obtains the registration of the trademark "Ming Kee", and then the "Ming Kee" brand could not not be used for cosmetics products, banking services, etc. that are unrelated to the restaurant business, even though the owner only uses it as a restaurant brand. This will definitely limit the development of different businesses.
That is why the existing system is like this: If two business owners are applying for the same trademark, but with the trademark classes and the descriptions of goods and services not similarity to each other (such as one is Class 43 Restaurant Service, and the other one being Class 3 Cosmetics Products), both trademarks could co-exist and get registered successfully.
Are Trademark Classes and Item Descriptions Universal?
Trademark Classes are generally universally the same, but the descriptions of the goods and services in individual classes might be different in different countries. For example, the United States are famous for having their own version of descriptions. In China, the situation is also similar. Applicants are advised to pick items available in the pre-approved lists in these countries, in order to avoid their applications being refused due to rejection of items.
How does selection of Trademark Class affect applications?
The way you select trademark classes would greatly affect your application:
Total Cost of Application: The fee for trademark application is determined by the number of classes applied-for, as each additional class requires an extra fee.
Chance of Success of Application: There is a crucial factor which would affect the approval rate of an application: whether there is any similar trademark already registered in the same/ in a related trademark class of those in your application. The rationale is simple: the more classes you apply for, the lower your chance of success, because the chance of conflicting to a prior registered trademarks will be higher.
Should I include as many Trademark Classes in my application as possible?
Question: what if I include as many trademark classes in my application as possible, would that allow my trademark to have maximum protection
Answer: Absolutely not! We strongly disagree that any company to apply for a large number of trademark classes at once, because:
The cost would be very high. Remember? More the classes, higher the official fees.
The application would likely be refused: Not only because having more trademark classes in an application make it more likely to conflict with prior existing trademarks, trademark examiners of the Registry would also possibly refuse your application as the examiners could consider the trademark unlikely to be used in such wide spectrum of businesses.
Our Recommendation: Consider carefully before choosing Trademark Classes
To improve the chance of approval, it is recommended an applicant should choose and designate trademark classes and items according to the actual business needs, and obtain trademark protection just right. If you want to get protection for your future business in advance, you may also consider applying for the relevant classes first, but we suggest the number of classes should still be moderate.
Actualis' Professional Trademark Service
Actualis is a professional IP consultancy firm with extensive knowledge, capable of assisting you to obtain trademark registrations without hassle. We have abundant experience in handling cases for a wide spectrum of companies in different industries, and excels in providing tailor-made filing strategies for your company.
If you have any question on trademark application, feel free to contact us for free consultation: (email: ip@actualisip.com) (Telephone/ Whatsapp: +852 9545 3177).
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