Trade mark classification – what is it?

The Nice Classification is also known as the International Classification of Goods and Services and is administered by the World Intellectual Property Organisation. As the name suggests it is a classification system of goods and services, it is apportioned into 45 classes which group similar goods and services into a class number. For example, legal services is proper to class 45. Put simply every good and service will have a class number! Classes 1 – 35 are for goods whereas classes 35 – 45 are for services.

In the UK the registered trade mark system is based upon the Nice Classification. Under the Trade Mark Rules 2008, when a trade mark is registered it shall be classified according to the version of the Nice Classification that had effect on the date of application for registration. The Nice Classification is essentially a work in progress and from time to time the system may be amended. When an entity applies for a trade mark it is a requirement for that entity to specify which goods and services registration is sought.

However, section 34(2) of the Trade Marks Act 1995 provides that any question arising as to the class within which any goods or services fall shall be determined by the registrar, whose decision shall be final. This means that although it is possible to use online databases to determine the correct class number, if the registrar does not agree, his or her decision is final. It should be noted that under this provision there is not a possibility of an appeal.

In turn this means that when one is drafting a trade mark application specific care needs to be taken when drafting the goods and/ or services specification. For example, if legal services is specified under class 44, the registrar will request that the term is moved into its proper class number 45 – resulting in a delay at minimum and the possibility of an additional class fee being payable.

Furthermore, once a trade mark application is filed it is not possible to add terms into the application. This means that when filing a trade mark application you should be looking towards what goods and services you will be providing over the next five years. This is because registered trade marks can be revoked for non-use after a period of five years. For example, if I were to file an application that specifies legal services and I do not provide legal services for five years from the application’s filing date it will be liable for revocation under the term legal services.

Should you need assistance with the drafting of your trade mark class specification why not get in contact with Lawdit where we would be more than happy to assist you.

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