How to choose your products and services when registering a trademark?

Defining the classes of goods and services is an essential phase in trademark registration. The content of the wording (the list of goods and services within the chosen classes) delimits the scope of protection of a trademark. The choice of classes can be difficult, because with the boom in the tertiary sector and new technologies, the Nice Classification tends to be out of step with the new products and services offered by companies. Once the classes have been determined, the wording must be drafted, i.e. the list of products and services included in the chosen classes. The wording has a strong strategic dimension because it must be sufficiently precise while covering the company's development projects. How to designate the classes of goods and services adequate? How do you write your trademark wording accurately?  

The Nice Classification

A classification system for products and services offered by companies

The Nice International Classification lists the classes of goods and services that the depositor can choose. This Administrative Classification is composed of 45 classes (34 product classes and 11 service classes). It has been adopted by most of the countries in the world, but its interpretation is very different depending on the country, hence the importance of consulting an Industrial Property Attorney. Through his experience, he is able to foresee possible objections to the trademark. For example, a French, American or Chinese examiner will not react at all in the same way to a wording, and will ask for more or less details according to the customs of his country.  

Why the classes?

The classes allow Industrial Property Offices to calculate the price of a filing. In France the INPI fees are 210 € for 1 to 3 classes, and 42 € per additional class. In the European Union, the fees are €850 for the first class, €50 for the second class and €50 for the third class.^th and 150 € per additional class. The delimitation of classes also facilitates prior art searches and thus the verification of the availability of a trademark. Indeed, when one wants to carry out prior art searches, one always refers to the classes in which one intends to register one's trademark, as well as, where appropriate, to related classes (which contain goods or services for which one considers that there is similarity or complementarity with those envisaged). In this way, an exhaustive search is obtained.  

Choosing the right classes

Some activities are very classical and trademark applicants can easily find the class to which they belong. This is the case for clothes made of class 25 for example (this class includes only articles of clothing, including shoes and hats), or restaurant services in Class 43. Other products or services, on the other hand, are more difficult to classify because they do not appear clearly in the classification. It is therefore necessary to choose the class that is closest in spirit to the product or service and then write it in such a way that the examiner will accept it in that class. For example, a bottle washer is nowhere in the Nice classification. Cleaning implements go in class 21, but washing machines go in class 11 instead. If our bottle-washer comes close to a dishwasher, it will go into class 21. However, if it is closer to more than one machine, it will belong to class 11 instead.   After identifying the classes of goods and services relevant, a precise brand name should be defined.  

Careful drafting of the wording

Writing a brand name is not an easy task, although it looks easy on the surface.

Trademark protection depends directly on the wording

In France, as in Europe and in most countries of the world, trademark protection is limited to the goods and services referred to in its wording. Indeed, since the case law of the Court of Justice of the European Union of June 19, 2012, "IP TRANSLATOR", the protection of trademarks is limited to the list of goods or services as referred to in the application. It is therefore not enough to copy the wording proposed by the INPI in a class to be protected for all the goods/services that would be covered by this class. Hence the importance of a complete and relevant wording. Thanks to his experience, the Industrial Property Attorney is able to a trademark registration optimal, with a customised wording and an appropriate selection of classes of goods and services.

Each brand has its own wording

The list of goods and services proposed by INPI at the time of filing is far from exhaustive. It is intended to serve as an example and essentially to help understand the spirit of each class. We therefore recommend a "tailor-made" drafting, avoiding copying the list proposed by the INPI. This list is often too broad (increasing the risks of conflict with third parties), or too narrow (the owner's activity is not always well covered). For example, certain professions such as coaching, business consulting or consulting to individuals are not directly covered by the Nice Classification. Classes should be chosen and services should be written according to the subject matter of the advice provided. The Industrial Property Attorney has the expertise to draft a clear and precise wording with regard to the company's activities.

Take into account its current and future activity

Filing a trademark application is an opportunity to take stock of its offer. The products and services covered by the application must correspond to the company's immediate activity, but also to its future projects. Indeed, it is not possible to add products or services, or even classes, to a registered trademark. In this case, it is necessary to make a new filing, with the same costs. Hence the importance of planning in advance all the activities that will be exploited under this trademark. The role of the Industrial Property Attorney is also to accompany his clients in this reflection, in order to maximize their protection. We are at your disposal for inquire.