Trade marks are wonderful items of intellectual property. For the owner, trade marks provide the legal right to prevent others from using that brand without authorisation. For consumers, trade marks are equally great as they allow us to determine where a product or service comes from. This way we know that if we buy a product with a certain brand on it, it will be of the same quality/origin as the next time we purchase it.
However, there are instances where multiple companies can own very similar trade marks. And, despite the overlap, as consumers we’re still well aware these are entirely different brands. For example, consider the term ‘Penguin’. The word has been registered as a trade mark for (at least) three different companies – as the brand name of a chocolate bar, as the brand name of a book publishing company, and as the brand name of a clothing company. How can this be? Well, it all comes down the classification system used by intellectual property offices.
In the world of trade marks, every conceivable good and service has been categorised into a “class”, meaning similar goods and services fall under a single class. There are 45 classes in total. The first 34 are reserved for goods, whilst classes 35-45 are reserved for services. For example, e-books fall into class 9, hard copy books fall into class 16, and writing services fall into class 41.
When an application for a trade mark is made, the applicant is required to apply for the brand in connection with the relevant goods and services, which then need to be described and put into the correct class. If the application is granted successfully, the trade mark will protect that brand in connection with those goods and services. So, if I have the brand “XYZ” registered for books in class 16, I should be able to stop third parties from using that brand in connection with books, but not necessarily for other goods or services.
And this is why “Penguin” can be registered as a trade mark by several companies – they’ll each be registered under a different class.
Getting your trade mark classes correct is very important for a number of reasons, not least that as part of a trade mark application the fees are calculated on the number of classes applied for. Additionally, if the wrong term is put into the wrong class at the application stage, the Intellectual Property Office will ask you to move that term into the correct class, which can mean additional paperwork and additional costs.
At worst, getting the goods and services wrong can have disastrous consequences. Once a trade mark is filed, it is not possible to add new classes into the application. This is only possible by way of a new application, which can mean that if any competitors get in there before you, they may be able to block your application. In short, it could mean that you are able to own the trade mark for your brand in connection with books in class 16 but not writing services in class 41.
A trade mark is a legal right to prevent others from using that brand. All of the lawyers at Briffa are experts in trade mark law. We know how to future proof your brand and we can advise you on what trade mark classes would be beneficial for your business. Why not get in contact for a free consultation to discuss the world of trade mark classes and to learn how we can help?
We’ll start with a no obligation chat where we’ll get to know you and understand your current challenges.
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