Wrong ideas about trademarks – New episode

Published onApril 2017

I have to designate the products and/or services listed in the heading of the classes of interest.

Wrong!

A trademark application includes a sign (name, logo, name + logo, slogan…) and a list of the products or activities that will be offered under this sign. For administrative purposes, these activities are divided into several categories, called classes. There are 45 classes, 34 classes of products/goods (furniture, clothing, telephones, medicines, cosmetics, tools…) and 9 classes of services (catering, transport, accounting, cleaning…).

An up-to-date edition of the Nice Classification, which includes a list of categories of products and services (referred to as headings) and a specific and comprehensive list of goods and services included in each class, are published on all trademark offices websites.

In order to file a trademark, a tailor-made wording must be prepared, detailing clear and precise goods and/or services for which protection of the mark is sought, and nothing but those products and services, in order to minimize risks of claims from third parties.

The mark must cover activities intended for third parties, not the products or services necessary for the internal business of a company (affixing the mark on the company’s header paper is not a use as a trademark for stationary, no need to file the trademark in class 16).

In France, the amount of taxes is the same for 1, 2 or 3 classes, so let’s designate 3 classes!

Not necessarily!

Of course, it is advisable to target all activities that could be carried out in the short or medium terms, to anticipate the development of the activities. However, if your activity is well defined and will not evolve, and falls into one class, targeting other classes exposes you to third party claims. In addition, these overly large specifications of unused products or services unnecessarily clutter up the trademark registers.

Moreover, the system of French taxes could soon be modified to reflect the Community system of the EU mark, which now provides for a tax per designated class.

Proper wording is a fundamental step before filing a trademark to help everybody know easily and precisely the scope of protection of a trademark and allow the best and appropriate protection and defense of the owner’s interests.

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Our previous post Wrong ideas about trademarks.