MKTU: what is it and how to determine the list of goods and services for registering a trademark?
When you decide to register a trademark, a number of procedural issues must be clarified for its full implementation. Since the trademark registration can be carried out only in relation to certain goods and/or services, which determine the limits of its “protection”, you should correctly determine the list of them at the very beginning.
Today we will elaborate on the classes of the Nice Сlassification and the importance of professional determination of the list of goods and services when registering your TM.
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What is the Nice Classification and why is it important?
A trademark is an identifier of the goods and services of a particular company (or group of companies) in a market that allows the consumer to distinguish one manufacturer from many others. Therefore, a trademark is registered only in relation to certain goods and services.
At the same time, when applying for the trademark registration, you can’t specify such goods and services randomly - at your sole discretion, they must be selected only from specific lists approved by law.
Goods and services in respect of which the trademark may be registered are divided into groups according to common features (e.g., materials used for goods production, purpose, functions, etc.) - classes which are combined in the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (hereinafter - the Nice Classification). For example, the Class 25 of the Nice Classification includes clothing, footwear and headgear, while the Class 38 of the Nice Classification includes telecommunication services.
Of course, it is not enough just to look through the full list of classes of the Nice Classification - you need to clearly understand the rules of the TM registration and know the algorithm for determining the appropriate class, depending on the desired trademark.
How many classes of the Nice Classification can be registered when registering a trademark?
The number of classes of the Nice Classification that you may use fot the trademark registration is unlimited. Thus, a company’s application may specify both one specific class and all 45 classes specified in the Nice Classification.
However, the number of classes specified in the application determines the amount of fees to be paid by the applicant when registering the trademark (regardless of how many goods/services from a particular class were specified). For example, the price of application for registration of one black and white trademark by one applicant in respect of goods and services of one class is UAH 4,000. But you will need to pay UAH 4,000 for each additional class.
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Until the decision on registration of the trademark is made by Ukrpatent, the applicant may change the classes of the Nice Classification and the list of goods specified in the application within these classes. For this purpose you need to file an appropriate application and pay the fee.
Please note! When filing an application, a company may ask to register a trademark in respect of all goods/services of the same class, as well as to indicate separate items.
For example, if a person manufactures gloves, it may apply for the trademark registration not only with respect to gloves and their elements, but also with respect to all goods of the Class 25 of the Nice Classification (which includes other wardrobe items). Why can it be advantageous? Imagine a situation when a company plans to expand production - everything will be ready for such a step without unnecessary registrations. It can also be a good protective tool if there is a risk of illegal use of the logo by others for selling such goods as hats and handbags, which also belong to the Class 25 of the Nice Classification.
At the same time, it should be taken into account that the trademark registration in relation to certain goods/services actually obliges the company to use this trademark. Otherwise, failure to use the trademark within 5 years may be a reason for early termination of the certificate for those goods/services in respect of which the trademark was not used.
Correct determination of the list of goods and services at the stage of planning the application for TM registration will help not only to avoid unnecessary financial expenses, but also to protect from third parties’ attempt to take this trademark.
If you need help with the trademark registration, don’t hesitate to call us. We will make sure that you get the desired result quickly and easily.
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