Table of Contents
In Short
- Classes define the goods/services your trade mark protects, impacting its scope and enforceability.
- Consider current offerings, future expansion, and broad descriptions for flexibility.
- Broader coverage offers better security but increases costs and potential challenges.
Tips for Businesses
When filing a trade mark, use tools like the UK IPO class search to select relevant categories. Broader descriptions (e.g., “clothing” instead of “t-shirts”) offer flexibility. Seek professional advice to align protection with business goals and avoid costly mistakes.
IP protection for branding elements, such as your business name and logo, can be significantly strengthened by holding a registered trade mark. A key consideration when submitting a trade mark application to the UK Intellectual Property Office (IPO) is what “classes” of goods and services to include on your application. The number and relevance of classes you select can significantly impact how broad your trade mark protection is and how easy it is to enforce your rights against a copycat.
What are Trade Mark Classes?
A “class” is a category of goods or services, and according to the Nice Classification, these are divided into 45 internationally recognised, standardised classes. Under this categorisation, there are 34 classes of goods and 11 classes of services.
Dividing the broad array of goods and services that any business can provide into preset categories helps standardise the registration process and ensure that your trademark registration clearly states what types of goods and services it covers. As this system is internationally recognised, it is also relatively straightforward to file trademark applications internationally, although different countries have their own customs.
Choosing the Right Classes
While this standardised categorisation certainly has its advantages, it can sometimes be challenging to understand which classes are and are not relevant. The UK IPO has an online tool that can help break down each class’s definition by simply searching for your business’s product or service.
Although applying with a wide selection of classes offers your trade mark broader protection, there are some other considerations to be aware of. For example, after five years, your registration may be vulnerable to an attack because you are not providing all the goods and services you have claimed on your application. If one of these attacks is successful, it can lead to the removal of the relevant class(es) from your registration.
Each additional class you include on your application also increases the Government fees paid at the time of filing and the renewal fees paid every ten years by £50 per class.
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Key Classes for Different Business Types
As this system attempts to categorise goods and services logically and methodically, there are common classes that are likely to be relevant for similar businesses. For example, all recruitment businesses will likely include class 35. At the same time, tech companies are more likely to need class 42 to cover software as a service and software development (likely in addition to various other classes).
The exact combination of classes you should include on your application will differ depending on your business and the priorities you would like to set. Given this complexity, we recommend seeking legal advice to ensure your application protects your brand appropriately.
LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.
Strategic Considerations
Your trade mark registration lasts for ten years, after which you simply pay the renewal fee to extend the protection for another ten years, and so on. It is not possible, however, to add classes to your existing registrations after filing. You would need to file a new application to extend your protection after filing. For this reason, consider which classes you should include from the start.
For example, will the business’ offerings expand in the next 5 years? Are there any upcoming developments in your industry that you should try to cover on your application?
However, this may increase the risk that your trade mark registration will conflict with an earlier similar registration. If filing a trade mark application for a country other than the UK, for example, using the Madrid Protocol, you may also be required to later amend your class descriptions depending on each country’s specific practices.
Overall, deciding how many and which classes to include will involve a cost-benefit analysis that will differ for each business, depending on its priorities and goals.
Key Takeaways
An internationally recognised categorisation system called the Nice Classification describes the different “classes” of goods and services a business can provide. Choosing the right classes when you submit a trade mark application is crucial, as you cannot add classes after registration. Therefore, it is essential to think strategically about both current and future business needs.
While broader protection across multiple classes offers more comprehensive coverage, it comes with increased costs (both initial filing and renewal fees) and potential vulnerability to non-use challenges after five years. You should balance the scope of protection against practical considerations.
Strategic class selection should consider future business expansion, international requirements, and industry-specific needs. It’s often better to file broader descriptions within chosen classes (e.g., “clothing” rather than “t-shirts”) to maintain flexibility while being mindful of potential conflicts with existing registrations.
If you need help with trade marks, 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
In the UK, the Government fees associated with filing a trade mark application are £170 for the first class of goods or services and £50 for each additional class. For example, the fees for one application in 3 classes are £270.
The critical question to answer this question is, “What do our customers pay us for?” You can use the UK IPO’s online tool to decide which classes, according to the Nice Classification system, these goods and/or services fall into. To ensure comprehensive protection, we would recommend seeking professional advice.
Yes, you can oppose their application if you believe your trade marks are identical or confusingly similar, and the other party claims the same or similar classes. Opposition proceedings can be complex and expensive, so you should weigh the benefits of opposing their application with the commercial risk to you of their mark-achieving registration. Often, out-of-court negotiations can resolve such matters without formal proceedings.
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