In Short
- Trade mark classes group products and services into categories. You must select the appropriate class for your business.
- You can apply for one or multiple classes, with each additional class costing £50.
- Choosing the wrong class could invalidate your application, so it’s vital to select carefully.
Tips for Businesses
Ensure you choose the correct trade mark class to protect your intellectual property. Use tools like TMclass to help identify the right class for your goods or services. If you’re unsure, consult a legal professional to avoid costly mistakes and potential disputes. Proper classification helps secure long-term brand protection.
If you are a business owner seeking to protect your intellectual property, you might consider registering a trade mark with the Intellectual Property Office (IPO). An essential part of the application process is considering which class or classes you wish to select which will cover the scope of your trade mark protection. In this article, we explore key considerations when selecting a trade mark class in the UK, as well as mistakes to avoid in the application process.
What is a Trade Mark Class?
The Intellectual Property Office (IPO) has adopted a universal system of classifications for various trade marks. These classes distinguish different business areas. The easiest way to understand trade mark classes is to see them as identifiers of your business service or goods you sell. They group different products and services together in order to make various areas of business easily identifiable. Therefore, your registered trade mark must make a claim to at least one class to receive protection in that area.
For example, if your business sells clothing, you should review the classes and select the ones that fit your business best. In this case, you would select Class 25 because this class is specifically for clothing, and it is likely your trade mark will need protection in that industry.
Trade mark classes aim to cover every industry. An example of some classes include:
- Clothing (Class 25);
- Handbags (Class 18);
- Metals (Class 6);
- Photographs (Class 16); and
- Tobacco (Class 34).
Additionally, when selecting trade mark classes, you are not limited to a single class. You can select multiple classes for an additional fee. The IPO calls these multi-class applications. They are useful for businesses looking to cover as much ground as possible.
How Do I Choose the Correct Class?
There is a useful tool called the TMclass search tool available online. This tool allows you to search key terms. It also provides you with suggestions for which class may be relevant. For example, when searching the word ‘shoes’ for a shoe brand, the tool suggests Class 25. This class relates to clothing, footwear and other aspects such as footwear and headgear.
The easiest method to identify which class fits your trade mark most accurately is to consider the following questions:
- What is the function of my goods?
- What sort of service do I provide?
- What industry am I in?
- What materials does my business use? E.g. raw materials, fruit and vegetables, wood, metal etc.
- What do my clients/customers pay me to provide?
These questions will help you determine which areas of trade your business operates in. In turn, you should be able to choose the most relevant trade mark classes.
Specification Statement
The registration process will ask you to provide a specification statement. This will contain a description of your goods or services. Within the specification statement, you should include details on what goods or services you currently provide to your customers. Likewise, consider any future plans, such as providing additional goods or services. This is not intended to be extremely broad or too future-oriented and should always genuinely reflect your business and the products or services that you offer.
You should also always consider your business’ future carefully when selecting a trade mark class. This is because it will be registered for up to 10 years. This means you will want the trade mark to remain consistent as your business grows and develops. A trade mark is a brand identity tool and should be able to have flexibility within the goods or services you offer now and also in the future.
While broad protection within your chosen classes is ideal, the IPO does have the right to challenge applications and request evidence if it believes that your goods and services vastly exceed your likely genuine business activities. Ensuring that your application claims broad enough goods and services to protect your genuine current and future endeavours is the ideal position.
LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.
Single-Class Applications and Multi-Class Applications
A single-class application will be for your trade mark to be registered in one class only. There is no problem with this, provided you feel that your goods or services do not fall into any other classes. You will want your business’ trade mark to be protected as much as possible. Therefore, if you think there may be an overlap between two or more classes, you may consider a multi-class application.
Multi-class applications give you more flexibility and provide you with greater protection across different classes. It is ultimately up to you what class you feel your products or services falls into. If you are unsure of what to choose, consult a legal professional to avoid making a mistake.
Can I Amend the Application Once It Is Submitted?
Once you have submitted the application to have your trade mark registration considered by the Intellectual Property Office, you cannot expand it. This means you cannot alter the actual representation of your trade mark (for example, by altering a logo or slogan), nor can you add classes from your application. If necessary, it is possible to remove goods or services, or entire classes, from your application, but generally this is not required or recommended unless your application has been objected to.
If you apply to register your trade mark in one class, but later decide you want to expand your business and brand into another class, you will have to submit a fresh application. This is why it is important to file your application correctly the first time.
Choosing the Wrong Class
If you choose the wrong class, your trade mark will not be protected in the area of trade your business operates within. It will essentially mean the process of registration has been worthless, and you will need to apply to register again in the correct class. This is why a multi-class application can be a better idea if you feel that your trade mark and business product or service fall between multiple classes.
The Importance of Professional Advice
While there are helpful online resources that can help you to describe your goods and services in a way that will be acceptable to the IPO, trade mark classification can be complex and nuanced. Failing to include the correct classes in your application, as outlined above, can have serious ramifications for your brand protection. Occasionally, where your mark is similar to an existing trade mark registration, a professional may also be able to strategically word your goods and services to reduce the likelihood of conflict. Investing in professional guidance can often be modest compared to the costs of filing and refiling applications yourself, and potentially entangling the business in a dispute.
Key Takeaways
Trade mark classes should be chosen carefully and correctly, as your trade mark will only be protected within the class it is registered within. You can not change your application once it is submitted. Therefore, you should ensure you apply correctly the first time. You can apply for one single class. Alternatively, you can make a multi-class application if you feel your business overlaps in several areas. This will cost an additional £50 per additional class application but could provide necessary protection for you.
If you need help with selecting a trade mark class, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0808 196 8584 or visit our membership page.
Frequently Asked Questions
You cannot amend an application either in terms of the representation of the trade mark itself, or to add additional classes to your application. You must select all classes you wish to register your trade mark in before your application is submitted.
To register your trade mark in one single class, the fee is £170. You will then pay £50 for each additional class you wish to apply for.
If you register your trade mark in an incorrect class, your protection will not extend to the goods or services your business actually provides. This means competitors could potentially use a similar or identical mark in the correct class without infringing your rights. Unfortunately, you cannot simply amend your existing application or registration to change classes, and so you will need to file a new application for the correct class, paying the full application fee again.
The trade mark registration process typically takes between three and four months if there are no objections or oppositions. Once you submit your application, the IPO will examine your application to ensure your trade mark meets the legal requirements. If the examiner raises no issues, the IPO will publish your trade mark in the Trade Marks Journal for a two-month opposition period, allowing third parties to challenge your application. If no oppositions are filed, the IPO will register your trade mark, which will remain valid for 10 years with the option to renew indefinitely.
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