The trademark registration process in the UK allows businesses the opportunity to protect their brand, their products, and services.
A key part of the trademark application process that business owners often find particularly challenging is trademark classification. And with good reason, considering the sheer number of trademark classes, you need to wade through. It’s understandable that you should consider turning to a specialist in intellectual property legal services for support when going through this process, but to get you started, here’s our guide on how to classify your trademarks.
Trademark Classification System
Before going through the trademark registration process, you must provide details of the goods or services that you wish to protect. This statement is usually referred to as the ‘specification’.
On a global scale, Intellectual Property Offices use a trademark classification system referred to as the Nice Classification. The Nice Classification puts types of services and goods into groups or classes intended to make the trademark classification process much simpler.
To register your trademark, you must first choose the category or class that is most relevant to the service or goods you provide. Details of any terms that apply to your class of trademark must also accompany these details in the specification.
Classifications List (1-45)
There are 45 trademark classes:
- 34 classes of goods
- 11 classes of services
Every trademark class is outlined under a broad heading, for example, paper and cardboard, but under this broad heading, further detail will outline what this includes, for example, bookbinding material, photographs.
This helps you identify the correct trademark class for the goods or service that you provide for your customers. But it is worth noting that the details included as part of the pre-approved terms for each class is not exhaustive. It is only intended for guidance. Explanatory notes are also provided to give more detail on the goods and services and where they should be grouped.
For any changes to the list, visit the World Intellectual Property Organisation (WIPO) website. This will also include explanatory notes.
Classifying Trademarks
When putting together the specification, you should stipulate the goods or services that you provide. But it should also include any goods or services that you intend to provide for customers in the future. It’s worth considering this at this stage because a registered trademark will last for ten years, and this could help you protect your business’s future endeavours as well.
This said you should not resort to proposing a specification that covers too many bases, for example, including goods or services that you do not really intend to sell. This could prove detrimental in the future, as the trademark you’ve registered may be challenged later on based on the grounds of non-use. You are also required to substantiate that the trademark you’re applying to register is in use at present in relation to the goods or services that you offer or that you intend to use the trademark as stated in the future.
When you’re in the process of evaluating which trademark classification your goods or services should be in, think about the following:
- Goods – The purpose or function of the goods and whether the goods consist of any raw materials.
- Services – What the service entails and which class corresponds to the subject matter of advice given in relation to information services being provided
Concern Over Selected Classes
Once you have filed your trademark registration application, you will not be able to add any more classes, nor will you be able to add any more pre-approved terms.
That’s why it’s vital to get the right advice before going ahead with the application process, making sure that you have identified the correct class(es) for your trademark, right from the start. If you have not selected the correct information as part of your application, you will need to start the application process over.
Summary + Resources
Use the TMclass search tool. This will help you to classify the goods and/or services that apply to you, helping you to get through your trademark registration application more quickly. You can also get more support from intellectual property experts. Your options include:
- Email the Intellectual Property Office Classification Team with any questions you may have
- Contact a trademark solicitor specialising in Intellectual Property and the trademark registration process.
