Trade mark classification

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 need 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.  

To determine the classes under which your trade mark should be registered, you should first draft a specification of goods and/or services. This describes 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.

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 start.

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.

When you make an application to register your trade mark, the cost of this application includes one trade mark class. If you wish to register your trade mark under different classes, you will need to pay an additional £50 per class.

Note that you only pay for the class, not the number of terms you select within each class.

For more information on registering your trade mark, read How to register a 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.