UNDERSTANDING WHAT A REGISTERED TRADE MARK COVERS AND WHY YOU SHOULD THINK CAREFULLY ABOUT THE CLASSES YOU CHOOSE

A trade mark application must contain a list of the products and / or services, for which the trade mark is being – or is intended to be – used, and for which protection is required. This is usually known as the “specification” or “identification” of goods and services.

The specification is important as it defines the scope of the rights acquired upon registration of the trade mark. In the UK and EU, broadly speaking, the ensuing registration gives the owner the right to prevent unauthorised use and registration of identical and similar marks, for identical or similar products and services, in circumstances where consumer confusion is likely. If the specification is too narrow, it can be difficult to prevent third parties from using similar trade marks for conflicting goods or services, as well as increase the risk of third parties acquiring conflicting rights.

Applicants therefore need to ensure that the specification is carefully drafted and adequately covers their interests – both current and in the foreseeable future. Once a trade mark application has been filed, the list of products and services cannot be expanded. Where products or services of interest have been inadvertently left out, they can normally only be covered by filing a fresh application, at additional expense.

The list of products and services must normally be grouped into classes; for this purpose, most countries around the world have adopted the Nice Classification, an international system which categorises all conceivable products and services into 45 classes. The classification system plays a key role in determining the scope of registered trade mark rights. If the products or services have been misclassified, this can affect the enforceability of the registration and potentially also its validity.

There are a number of online tools that can help applicants to draft their list of products and services. However, the assistance of a qualified trade mark practitioner is often invaluable in the process of securing broad and robust protection.  

In particular, determining the correct classification can be complex and there are a number of pitfalls for the inexperienced applicant. For instance, “alcohol” features in classification guides in class 1; however, class 1 is not sufficient to protect all forms of alcohol – it largely covers alcohol as a chemical product for use in science or manufacture (for example, ethanol for scientific purposes). On the other hand, ethanol as a fuel would belong in class 4. The end producer of alcoholic beverages would also need to be wary: alcoholic beverages fall in classes 32 or 33, depending on whether they take the form of beer, wines or other spirits.

In addition, whilst there are obvious risks to drafting too narrow a specification, being overly broad can be equally problematic. In a number of countries, such as the UK and US, applicants must be using, or have bona fide / genuine intention to use, the mark in the relevant country for all the products and services claimed when an application is filed. Covering products and services for which there is no intention to use the mark could potentially jeopardise the validity of the ensuing registration and increase the risk of facing an opposition from third parties. 

Recommendations

• The specification should normally describe the products and services in ordinary commercial terms; as a general rule, we advise naming all relevant products and services individually, to ensure they are protected.

• Consider also covering general categories of goods and services (eg “clothing” in general, as well as t-shirts, dresses, skirts and socks), where permitted and within reason, to ensure sufficiently broad protection.

• Aim to protect your products and services of interest in the foreseeable future, not just those of immediate interest, to avoid the need to file repeated applications in the short term.

• Consider covering not just your key products and services, but also any ancillary products and services. For example, will you be offering repair and maintenance services related to your goods, or associated advice and consultancy services?  

• Where of interest, it is sensible to include “parts and fittings” for the products claimed in the relevant class. However, don’t assume this language will cover all kinds of parts and fittings for the goods in question – only those in the class covered will be protected. For example, wooden furniture is proper to class 20, but metal hardware for fixing and fitting furniture (eg screws and brackets) would generally fall in class 6. 

• We recommend that trade mark owners review their portfolios on a regular basis to ensure their registrations cover all products and services of interest, with a view to filing fresh applications, where necessary.

This update is for general information and does not constitute legal advice. If you have any questions regarding trade marks and brand protection, please get in touch with Corinna Hiscox.