Classes of goods and services
Once the mark has been found, and the prior art search has been carried out, a wording should be drafted. Indeed, in application of the principle of speciality, the trademark is protected only for the goods or services mentioned in its wording.
In order to achieve maximum protection, it is necessary that the wording be realistic and adapted to the mark: it must be neither too wide nor too narrow. To do this, you must be familiar with the Nice Classificationwhich organizes products and services into 45 different categories. A good knowledge of the system makes it possible to make legally secure deposits at a lower cost.
The wording: the brand identity card
When filing a trademark application, the proprietor must indicate the list of goods and/or services for which he wishes protection. This list will constitute the "wording" of the trademark. The drafting of the wording is a crucial step for the applicant, as it will condition the future life of his trademark.
- Too narrow a wording may thus prevent further development of the trademark. All the more so since the depositor is prohibited from adding new products and services once the deposit has been made.
For example, a trademark is registered for clothing (class 25). As this one sells well, the owner decides to launch a range of bags (class 18) under the same name a few years later: he will then have to register a new trademark to protect this exploitation, which was not initially envisaged.
- Overly broad wording also has drawbacksThe risk is high cost, the possibility of rejection by the Trademark Office and, above all, the risk of having one's trademark attacked by competitors.
Let's compare 2 trademarks: Trademark A has been registered in 3 classes (270€ of INPI fees), while Trademark B has been registered in 10 classes (550€ of fees). Trademark A has not received any opposition, because its activity is well defined. Trademark B has received 2 oppositions from competitors who think that it is trying to create a risk of confusion in order to appropriate their customers. It will have to negotiate coexistence agreements and probably reduce its wording. It will incur costs to defend itself. After 5 years, Trademark A will have no difficulty in proving its serious use in the registered classes, whereas Trademark B will have difficulty in exploiting its mark in all the targeted classes. It therefore risks a revocation action for non-use in the classes where the mark is not used.
In addition, the offices are becoming increasingly demanding on the wording wording. Thus, since 2012, the Court of Justice of the European Union (CJEU) considers that an imprecise wording does not make it possible to assess the scope of the protection sought. This results in an obligation for applicants to write brand names with clarity and precision so as to avoid any ambiguity as to the scope of the mark.
An applicant who would use the headings of the classes of goods and services in its wording, could receive a decision of irregularity from the Office. Failure to comply within the time limit mentioned, the application would then be subject to a partial refusal of registration.
It is therefore essential to draft its wording carefully. Indeed, unclear wording may lead to significant costs, limited protection and a significant legal risk vis-à-vis third parties.
The Nice Classification: classes as a practical tool to prepare its wording
To register a French, European or international trademark, it is necessary to refer to the Nice classification. In order to facilitate the work of trademark registration offices, a large number of countries apply this international classification system, which organizes the various goods and services into 45 categories (the "classes").
The products are divided into classes 1 to 34. For example:
- Class 9: Software, computers, telephones, USB keys, scientific apparatus
- Class 14: Jewelry, watches...
- Class 16: books, magazines, postcards, pens...
- Class 25: Clothing, footwear...
Classes 35 to 45 refer to services. Examples :
- Class 35: Advertising; management of commercial affairs; human resources
- Class 39: Transport; travel arrangements
- Class 41 training; entertainment; sporting and cultural activities
For each class, the Nice Classification provides a non-exhaustive list of the elements that make it up. A short description of each class is proposed on the INPI website. More detailed information can be found on the website of the World Intellectual Property Office (WIPO).
This classification was established under the Nice Agreement in 1957....he is often criticized for not being very current. However, it is constantly being revised to keep it up to date, in particular by incorporating new products and services that were not previously considered (the internet and mobile phones did not exist in the 1950s!). The 12th edition came into effect on January 1, 2023.
As this evolution is not very regular, there are target classes (such as Class 33, which includes only alcoholic beverages), while others could be described as "catch-all" (Class 45 includes a wide range of services, from legal advice to horoscopes, child care and funeral services).
In addition, it may also happen that a product or service is not expressly named, either because of its specificity or because of its novelty: in this case it will be categorize it according to its type, nature or destination. For example, a piece of art made of wood will go into Class 20, if it is made of metal it will go into Class 6, if it is made of glass it will go into Class 21... This is a complex step, as some Offices may reject the application for registration when they consider that the good or service concerned does not belong to the correct class.
3 steps to make your brand wording
1° Define the products and/or services
The first step is to assess its needs The products and services that will be offered must be defined first and foremost. to the public.
We must also be prepared to extend its scope. Therefore, the conditions of the further growth of the brand.
For example, if you make shoes today, you may decide to offer other products (such as bags) in a few years.
But you shouldn't think too broadly either: be realistic. You may be tempted to claim a wide range of products and/or services, but this has higher costs. In addition, if you do not use your trademark for all the goods and services requested, it will not be defensible against competitors.
2° Identify the corresponding classes
In the second step, you will need to identify the corresponding classes to your needs, i.e. to match the list established in the previous step with the Nice classification. This step has an impact on the royalty amount which you will have to pay to the registry office:
- In France, the registration of a trademark in 1 class costs 190 €. Each additional class is 40 €.
- In Europe, the 1st class costs 850 € and the 2th is offered at a reduced price (50 €). From the 3th class, the costs are higher (150 € / additional class).
3° Write the wording
Finally, the last step is the editorial staff Strictly speaking, the wording. The wording must be sufficiently specificto meet the requirements of the ECJ. However, it must also contain the formulas customary in the matter, so as not to delay the procedure unnecessarily. Indeed, a trade mark which is not worded in a proper manner is likely to receive a notification from the examiner requesting clarifications or modifications of the wording. This can considerably delay the registration of your mark.
But, as we'll point out in another article, it is absolutely necessary to avoid the pre-written wordings proposed by the INPI. These will not protect you effectively!
As the choice of classes and the drafting of wording are often strategic and complex steps, it is strongly advised to use a Intellectual Property CounselHe is accustomed to the rules of classification and is familiar with editorial practices.
Update: January 3, 2023