Defining the goods or services to be covered
Before filing an application to register the trade mark that you have selected, it is necessary to select the relevant class or classes and define the scope of goods or services in each class that you want the trade mark to cover.
Most types of goods and services are classified in 45 different standard classes in accordance with the Nice International System of Classification, and the classes that are relevant to your trade mark should be selected based on this system.
For example, “clothing” is generally covered under Class 25 and “software” is generally covered under Class 9, whilst “financing services” is covered under Class 36.
Dragon Law helps make this process easier by automatically generating a list of the relevant classes based on key words:
You can also browse all available classes and select the relevant classes:
The standardised terminology used to describe each of the goods or services within a class should also be utilised wherever possible. However, if no suitable standardised terminology exists to describe your goods or services, for instance where they relate to an entirely new technology, it may be appropriate to define the goods or services in your own terms.
Consider future uses
It is very important that the description of the goods or services is carefully considered before filing your application so that it accurately and thoroughly defines the relevant scope of goods or services that you wish the trade mark to cover, as it will not be possible to expand the scope of the description in the application after it has been filed. It is also important to consider not only what goods or services you are currently using the trade mark in relation to, but also what goods or services you intend to use the trade mark in relation to in the future, or what potential investors and/or licensees may require the trade mark to cover.
Extra classes, costs, and non-use
Although having broad coverage of goods or services under a trade mark may be advantageous, as the number of classes of goods or services covered by the trade mark increases, the costs of securing and maintaining the trade mark registration will also increase. Furthermore, even if the trade mark is ultimately registered in relation to a broad range of goods or services, unless the trade mark is actually used in relation to all of the goods or services, the trade mark may be subject to removal for non-use in relation to some or all of the goods or services covered.