Once you register your trade mark under a specific class, you'll be able to take legal action against anyone who uses your brand without your permission, including counterfeiters.
This means once you have registered your mark, you will be afforded greater protection, eg there is no meed to prove the elements of passing off (goodwill and reputation). Legal proceedings and dealings are also simplified, in that once you register your trade mark under the appropriate class, your title to that mark is assumed.
Trade mark classification
In your application for trade mark registration, you must specify under which class or classes you want your goods or services to be registered. Classes include: Musical instruments (Class 15), Clothing, footwear and headgear (Class 25) and Games and Playthings (Class 28). Both the
UK Trade Mark Registrar and
EU IP Office use the
NICE Classification System, which is divided between classes 1 to 34 (goods) and classes 35 to 45 (services). Each class consists of a list of goods and services, but the list is not exhaustive. You can select the appropriate class or classes of goods and services you wish to apply for and pay a separate filing fee for each class. It is possible to register for multiple classes.
Why are trade mark classes important?
Determining your class
To determine the classes which your trade mark should be registered, you should first draft a specification of goods and, or services. This decribes the goods or services which you are using the mark for. It needs to be sufficiently clear and precise and cover not only products of immediate interest, but also those which are intended to be of future interest.
To identify which category your goods or services belong to, you should take into account:
The function and purpose of the goods and or services
Whether the goods consist of any raw materials
What activities are involved in the service; and
The class to which the subject matter of the advice corresponds when information services are being considered
The Trade Mark Act allows you to specify territorial and other limitations, such as waiving the right to the exclusive use of any part of the mark. In some cases, those limitations can increase the chances of success of the application.
It is not in the interest of a brand owner to make the specification so broad, so as to cover goods which the company does not in reality, anticipate to market, since this would risk the mark becoming vulnerable to an attack post-registration. The application must be supported by a statement that the mark is in use in relation to the relevant goods and services, or that the applicant has a genuine intention to use the mark in such a way.
Choosing the wrong trade mark class
If you are using your mark for a class of goods or services that it is not registered for, you could unwittingly be infringing someone else’s registered trade mark. In addition, a competitor could register a similar mark in the class you should have registered under, thereby giving them trade mark rights in a class that is superior to yours.
If you register your trade mark in the wrong class, you cannot switch to another one later, therefore, it is important to register your mark in the correct class from the outset.
Your application must be supported by a statement that the mark is in use in relation to the relevant goods and services, or that you have a genuine intention to use the mark in the way you have specified.
Protecting your trade mark
If a third party uses one of your registered trade marks within your specified class you may want to consider using a Cease and desist letter to attempt to bring an end to the activity. If the matter is more complicated, you can always Ask a lawyer for advice.