If you want to register a trademark in Spain or in the European Union and you have already verified that it does not resemble any previous registered trademark (as we explained here), you have probably already realized that one of the steps you must take to register is to choose which products or services to register the trademark for.
In this post, we explain how to choose the right products and services for your trademark registration.
What does it mean that I have to choose products for my trademark registration?
Trademarks are always registered in relation to a specific set of products and services. This means that the protection afforded by a registered trademark applies to the products and services covered by the registration. As we explained in our Frequently Asked Questions, this is known as principle of speciality.
If, for example, a company has a trademark registered in Spain to cover car repair services, it can prevent another company from appearing in Spain with a trademark that is the same or similar to its own to distinguish that same service, or another similar service (for example, window tinting services). However, it cannot prevent another company from appearing in Spain with an identical or similar trademark to distinguish, for example, sunglasses, because it is considered that consumers will not confuse the two trademarks or understand that they belong to the same company, as they are such different products.
I can only take action against trademarks that are identical or similar to mine, covering different products or services, if my trademark is renowned: that is, if it is known to the general public, which is very rare.
Where can I see the products or services I have to choose from?
Trademarks are registered according to an international classification of goods and services, applicable in many countries around the world, called Nice Classification. The Nice Classification categorizes the products and services that we can find on the market into 45 classes or groups. The first 34 classes correspond to product categories; while classes 35 to 45 correspond to types of services.
Thus, for example, class 3 distinguishes cosmetics; class 9 distinguishes software and hardware; class 25 distinguishes clothing; class 41 distinguishes education and entertainment services; and class 45 distinguishes legal services.
When registering my trademark, I will need to identify which classes in the Classification cover the products and services that I intend to distinguish with it and for which I want it to be protected. Once the classes have been identified, I will need to draw up a list of those products and services belonging to that class.
The analysis of the classes in the Classification and the goods and services contained in each of them can be done using the tool. CLINMAR of the Spanish Patent and Trademark Office. It is a very intuitive page where you can search to see whether certain terms are included in our classes of interest.
Each class in the Classification begins with a “class heading” or class title, which broadly describes what types of products and services can be found in that class. In addition to CLINMAR, the entire list of “class headings”You can find it in the tool. TMClass of the European Union Intellectual Property Office (EUIPO), which also allows you to search for specific terms here.
Whether you use CLINMAR or TMClass, searches can be performed by including what is known as harmonized classification. This is a more comprehensive classification in terms of the products and services included, and more exhaustive than the Nice Classification (which we could call “official”), but it has been accepted by all registration offices in the European Union. This means that if you choose products or services from the harmonized classification, you can be sure that they will be accepted by the other EU offices, but they may not necessarily be accepted by registration offices in other territories.
I've found the classes I'm interested in. Now what?
In general, our recommendation is to start the list of products and services with those that are “officially” part of the Nice Classification; and then, if necessary due to the specificity of the product or service we want to cover, include those that are required within the harmonized classification. We will always separate products and services with semicolon, given that it is a formality required by the registry offices.
Perhaps due to ignorance, it is very common for trademark applicants to simply indicate “class heading” or class title. This is a practice that we do not recommend. In the Article 33.5 of the European Trademark Regulation It is clearly stated that class headings protect only the goods and services included in their literal wording. This is also the criterion of the OEPM and most EU registration offices, as can be verified. here.
For example, let's say that a company that manufactures zippers for clothing wants to register its trademark. If we search CLINMAR, we see that the product “zippers” is expressly contained in class 26. But the title of class 26 is, literally, as follows: “lace, cord, and embroidery, as well as ribbons and bows; buttons, hooks, and eyelets, pins and needles; artificial flowers; hair ornaments; hairpieces”. Is the product still available?“zippers” literally contained in the title of class 26? Can it be understood that “buttons and hooks”cover the product in a more generic way“zippers”It is better not to leave it open to interpretation, and to expressly include “zippers” in the trademark application. Therefore, we must be aware that a correct list of products and services, sufficiently accurate and comprehensive, will ensure the security of our trademark registration.
In that case, let's register all products and services in all classes...! Or maybe not?
At this point, It may seem better to file an application that covers the largest number of classes and the largest number of products and services in each class, but this is rarely the case., for two reasons.
The first, for purely budgetary reasons: the more classes, the higher the costs (both in official fees and, normally, in professional fees if you entrust the matter to a professional).
And secondly, because the owner of a trademark is obliged to use it for the products and services for which it has been registered (as we explained in this post); so that, five years after registration, anyone can challenge its validity (through the appropriate legal channels) and the owner is obliged to prove that they actually, and not just symbolically, use it for all the products and services covered. If they are unable to provide sufficient proof, their trademark registration will be canceled for those unproven products or services.
On the other hand, experience tells us that there are very common mistakes in the choice of classes, especially when the application is made directly by the applicant without the assistance of a professional. A frequent mistake is to cover with a class corresponding to a product (for example, class 18 to cover backpacks), which is actually a sales service (class 35) for that product. Therefore, it is important to clearly distinguish between product classes (1 to 34) and service classes (35 to 45). For example, if I am going to open a business manufacturing and selling backpacks that will carry my brand, the appropriate class will be 18. However, if I am going to open a store selling third-party backpacks (without my brand distinguishing the backpacks themselves), the class will be 35.
Finally, given that the proper protection of your trademark will depend on the correct choice of classes and the complete preparation of the list of goods and services, we recommend that you consult a professional: a industrial property agent or a trademark attorney. An expert like this can help you conduct searches to see if your brand is registered (here are some tips). here), can help you with all the registration procedures and advise you on the strategies to follow if you receive a brand failure (as we explained in this post).
At Bamboo, we are specialists in patents and trademarks. You can see some of our services. here. Contact us at info@bamboo.legal or through our contact form. We would be delighted to work with you.
