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Understanding Trade Mark Classes

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What is a Trade Mark?

Briefly, a trade mark is a sign which can distinguish your goods/services from those of other traders. This can include: for example, words, logos, colours or a combination.

Very often companies use their trade mark as a marketing tool, not only so that customers recognise their products/services but also because it can be a very valuable asset, and very often products/services which are trademarked are deemed to be reliable and of good quality.   Plus in the event of conflict with other brands and companies your registered trade mark can assist you.

The Trade Mark Classification

The Trade Mark Classification system is divided between goods, in classes 1 – 34 and services, in classes 35 – 45.  The examples provided in these classes are not exhaustive and you would therefore need to use the Classification Search Tool if your goods/services were not on the list.  This is because your trade mark gives your product or service the correct protection, and very often applications fail because the correct class or classes were not indicated when submitting an application.

It can be confusing and due to the costs involved (especially if you have to make repeat applications) it is advised that using a Trade Mark Attorney makes for a much easier process.

Some of the classes for the Classification of Goods include:-

Class 11 – Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; air conditioning apparatus; electric kettles; gas and electric cookers; vehicle lights and vehicle air conditioning units.

Class 12 – Vehicles; apparatus for locomotion by land, air or water; wheelchairs; motors and engines for land vehicles; vehicle body parts and transmissions.

Class 15 – Musical instruments; stands and cases adapted for musical instruments.

Class 16 – Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 25 – Clothing, footwear, headgear.

Some of the classes for the Classification of Services include:-

Class 35 – Advertising; business management; business administration; office functions; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; trade fairs; opinion polling; data processing; provision of business information; retail services connected with the sale of [list specific goods].

Class 36 – Insurance; financial services; real estate agency services; building society services; banking; stockbroking; financial services provided via the Internet; issuing of tokens of value in relation to bonus and loyalty schemes; provision of financial information.

Class 38 – Telecommunications services; chat room services; portal services; e-mail services; providing user access to the Internet; radio and television broadcasting.

Class 43 – Services for providing food and drink; temporary accommodation; restaurant, bar and catering services; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation; retirement home services; creche services.

The reason that there is a Classification List of 45 classes is an attempt to ease the process of identifying which category your particular goods or services belong.  Basically:

  •         a product is classified according to its function or purpose.
  •         raw materials are classified according to the material of which they consist.
  •         services are classified according to activity
  •         information services are classified in the same classes as the services that correspond to the subject matter of the advice.

Since the implementation of the new Trade Marks Act on 31 October 1994 applicants have been able to file an application covering more than one class of goods/services, these are more commonly called multi-class applications, and are a very useful tool for some companies.

When filing a trade mark application, you must identify which class or classes of goods/services you wish to apply for and pay a separate filing fee for each class.

Although the trade mark office reviews each class of goods and services independently, you should file an application to cover all classes that you intend to file your trade mark under. Even if your trade mark is rejected for a specific class, you will still be able to register your trade mark for the remaining classes.

The value of filing your trade mark is supported by the fact that a 2011 IPO (Intellectual Property Office) study found that companies who apply for trade marks are on average 7% more productive than those that do not.

In 2014 there were 110,838 UK trade mark applications, and these are increasing year on year, and the benefits are substantial.

However, the classification list is long, and it can be hard to ascertain quite where your product or service sits, and it can be far easier to seek the help and advice of a trade mark attorney who deals with these applications on a regular basis.

Differences between an EU trade mark and a UK trade mark

Difference between an EU and UK trade mark in an infographic
From the 23rd of March, there have been changes to the EU trade mark registration process. This post has been updated to reflect those changes.

Trade mark registration is territorial in the sense that you must generally register your brand on a country-by-country basis. For example, a trade mark that is registered in the UK will only provide registered protection within the UK. A business or company which trades in different countries beyond the UK and which wants to secure trade mark registration will generally need to do so in each individual country in which it is actively trading. An important exception is the European Union Trade Mark (“EUTM”) which, with a single filing, provides registered protection across the whole EU territory without the need to apply to register your mark in each individual EU member state.

Deciding between an EUTM and a UK trade mark

If you are actively trading in several EU countries, you could secure registered trade mark protection for all of them in one go if you file an EUTM application. As a rule, the costs of EUTM registration are cheaper than separate national filings in more than two or three EU states. And, of course, upon registration, your mark will enjoy protection across all 28 EU states (or 27 after the departure of the UK from the EU).

If, however, you actively trade under your brand in the UK only then a national UK trade mark registration is probably the best way to go. Financially, it is far cheaper than filing an EUTM application.

The potential downside of EUTMs

Precisely because an EUTM registration protects your brand across the entire territory of the EU, it not possible to exclude one or more EU states from the EUTM application. A consequence of this is that a valid opposition or challenge to your EUTM from an earlier trade mark owner in just one EU state is enough to prevent completely the registration of the EUTM. So, for example, a successful opposition by the holder of a national trade mark registration in Malta (whose population is about 0.01% of the EU total) would prevent you from obtaining EUTM registration, although you could still seek protection at a national EU state level.

Please note also that if your UK or EUTM application should be refused, you will not be able to recover the filing fees which have been paid.

Difference between an EU and UK trade mark in an infographic

The Fees

EUTMs are levied by the EUIPO on a per-class scale. For a single-class application, the EUIPO official fees are eur850. A two-class application will incur official fees of eur900. There is a fee of eur150 for each additional class thereafter.

UK national trade mark fees are also levied on a per-class basis. The UKIPO official fees for a single-class application are £170 and the extra fee for each additional class is £50. Additional official fees may also be payable depending on the type of mark. For example, a series mark will incur an additional fee of £50 for each mark added to the series.

You can calculate the fees for your trade mark by using our trade mark calculator.

Deciding between filing your application in the UK or the EU requires consideration of several factors. It is highly advisable therefore to consult with a trade mark specialist in trade mark law who will be able to give you the best trade mark filing strategy adapted to your needs. Click here to complete our form and one of our trade mark lawyers will contact you to discuss your options.

The Trade Mark Registration Process In The UK – Infographic

A flow chart of the trade mark process in the UK

Trade marks registration can be a complicated process. This is why the entire process can take between 4 to 5 months. There is no guarantee that the trade mark will be registered, but if clear guide lines are followed and a trade mark attorney is involved, your trade mark has a good chance of being filed. A trade mark is in essence your brand. It has to be unique for it to be registered. A registered trade mark gives the owner legal rights to take action against others who use the brand name without permission. Trade mark protection is limited to the country where the trade mark has been registered.

If you trade in the UK only, then you should register a trade mark in the UK. The infographic below shows the trade mark registration process in the UK.

A flow chart of the trade mark process in the UK

The Trade Mark Registration Process In The EU – Infographic (Updated)

Flow chart of the EU trademark
From the 23rd of March, there have been changes to the EU trade mark registration process. This post has been updated to reflect those changes.

The European Union (EU) provides business owners an opportunity to register a trade mark in all the member states of the EU through a EU Trade Mark. The process has some similarities to the UK trade mark registration process. The registration process takes between 5 to 8 months and gives the trade mark owner legal rights to take action against others who use the brand name without permission.

If you trade in the EU, or looking to expand into the EU then you should register a EU trade mark. The infographic below shows the trade mark registration process in the EU.

The EU trademark process displayed in a flow chart.

Why being too descriptive when choosing a trade mark is bad?

Creating a descriptive trade mark

You can’t register a trade mark which is too descriptive. According to UK and EU law, descriptive marks are “trade marks which consist exclusively of signs or indications, which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical, origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;” Confused? A couple of examples may help. So “Food land” for a supermarket, “Cold and creamy” for ice creams or “Seven days” for newspapers would be seen as being too descriptive.

Unfortunately it is a common mistake by small companies and new start-ups when choosing their trading name. Descriptive names come readily to mind for the simple reason that a name that describes what you do seems to make perfect sense. At the time it appears a great idea as consumers would have no doubt what you do. You may even have made this mistake yourself. However when the time comes to register your trade mark the Intellectual Property Office will most likely object to their registration.

Why descriptive marks cannot be registered

You need to think about that the definition itself of a trade mark, its function. The Trade Mark law says that it is a sign capable of graphical representation that distinguishes the goods and services of your business from those of other businesses. This means that its main purpose is to differentiate your business from another business especially in the same area of trade. It helps consumers to identify the source/origin of the goods and services offered, in other words from which company it’s coming. Think about the examples given earlier, how would they fulfil this condition? It is pretty clear that if I say “food land”, the average consumer would think about a supermarket or a market that sells food. It would probably not think of your company as it would be indistinguishable from others. It would also be unfair and against competition law to prevent other companies from using those words when they describe particular goods or services and make it difficult for them to promote their products.

Would it be possible to overcome this decision?

In some circumstances, there’s still hope! In most countries, registration may still happen if you think that your trade mark has acquired a secondary meaning for the consumers. You will have to prove that your trade mark has acquired distinctiveness through use by demonstrating to the examiner that the consumers in the marketplace associate your mark with your business, that they can identify that the products you sell or the services you provide come from your company. IPOs usually review all your evidence and if you have been able to demonstrate that your trade mark has acquired distinctiveness through use as a matter of fact, then your trade mark application would be accepted and would proceed to publication. Going through this process is not easy and generally requires the help of trademark attorneys such as ourselves.

How to avoid this situation

Make sure your trade mark distinguishes your company from another, and that it has a distinctive character. Make it something different, something out of the ordinary! The best would be something so original that when you see it you don’t have to think twice and immediately recognise your company, what you sell, the quality of your product etc…. the more original your trade mark is, the stronger it will be. Think about Rolex and their nice luxurious Swiss watches, the quality of them, the beautiful designs… or Nokia and their modern cameras or smartphones. Be innovative and imaginative!