What is the wording of a trademark?
A trademark cannot be registered in a general way, it must target classes containing a number of products and/or services. Once drafted, the list of goods and/or services of your trademark is called "". wording ».
The wording is very important because it delimits the scope of trademark protection. Poorly drafted wording can be detrimental to the trademark owner:
- a wording undershort which does not contain the whole of the holder's activities will deprive him of protection at least in part ;
- a wording too long containing goods or services that are not of interest to you exposes you to unnecessary expense (e.g. payment for unnecessary additional classes) and to more third party actions against you (including oppositions by third party holders of prior trademark rights for goods or services that are included in your wording but are not actually of interest to you);
- a wording vague may not sufficiently protect its activity, if at all (e.g. by using a "standard" INPI wording that does not target your products or services precisely enough).
It is therefore necessary to have a good understanding of the classification system in order to use it to best protect one's activities under one's trademark.
The need for tailor-made drafting
The industrial property offices with which trademarks are registered offer lists of goods and services for each class, which are rarely suitable for each individual case. These lists are, depending on the class, relatively vague and only exceptionally cover well-defined occupations.
To have the best possible protection, it is therefore necessary to break away from these pre-established lists, and redraftThe company's current and future activities are targeted at the company's current and future activities. Indeed, the scope of protection of a trademark cannot be extended after its filing (it is then necessary to proceed to a new trademark filing, and pay the same fees).
To do this, you need to understand the spirit of each class and the writing practices commonly accepted by the offices. Thus, the protection of the trademark is more precise and the risks of refusal are greatly limited.
The Nice Classification
The Nice classification is the result of an international agreement. As a result, almost all countries in the world apply it internally. This means, for example, that Class 25 contains the same products in the United States, France and Japan.
The Nice classification contains 45 classes in everything. Classes 1 to 34 are for productsand classes 35 to 45 are for services.
What's in the classes?
The classes of goods and services are a kind of guide to follow. Each one covers certain types of goods or services, and no list is exhaustive because it's constantly evolving. That's how innovative products can enter a class today when the classification dates back to 1957 (although it has been revised since then).
For example, Blu-ray discs did not exist in 1957 but could be included in Class 9, which includes recording media.
When you are having trouble finding the class for a product or service, you should ask yourself both about the subject of the product or on the destination of the product or service.
For example, all clothing is in principle class 25, regardless of the material used in its manufacture. BUT a garment intended for safety (for example safety shoes, fireproof jackets, etc.) will go into class 9 because this corresponds to the "philosophy" of this class, which contains, among other things, all safety devices and objects.
Another example is that a consultancy service is considered very vague by intellectual property offices. Therefore, one has to dig deeper and find out what the purpose of the service is. A legal advisory service will go to class 45. But a tax advisory service will go to class 35. An advisory service that in reality is more like training will go to class 41.
An example concerning the material: a statuette made of non-precious metal will go to class 6 (metals), if it is made of precious metal it will go to class 14 (jewellery and precious metals), if it is made of wood it will go to class 20 or if it is made of crystal it will go to class 21.
A precise knowledge of the spirit of each class is therefore important to properly classify its products and services.
The principle of public offering
The trap current in which one must avoid falling when filing a trademark is to include the goods or services in it. not available to the public, but which are only used internally. This regularly leads to additional costs because more classes are targeted than necessary, which also increases the risk of conflict with third parties.
For example, equipping your employees with uniforms that bear your trademark but are not sold to the public does not require you to register your trademark in class 25 (clothing).
Similarly, a law firm that has an in-house employee to deliver the mail and parcels that it needs to urgently forward to its colleagues or clients does not use its trademark for courier services. Indeed, the firm uses this means to save time but the recipient does not pay for this service. He pays for the legal advice service (class 45).