While registering a trademark, two items play a vital role. First one is considering WHICH regions to register your trademark in. The other one is classifying goods and services provided by the organization as per NICE Agreement.
Trademark Classification
The World Intellectual Property Organization (WIPO) uses a trademark classification system that groups together all goods or services into 45 different classes. WIPO refers it to as the Nice Classification. Each class contains a list of pre-approved terms. There are 34 classes of goods and 11 classes of services.
Listed below is a brief description of classes as identified under the NICE classification:
- Classes of Goods: This section includes the classification of goods under 34 different categories.
- Classes of Services: This section particularly focuses on the classification of services provided by a corporation. These classes lists from 35-45.
In Canada, We have Class 0 as well. Any Goods and services can be listed under this classification under the circumstances when Canadian Intellectual Property Office (CIPO) could not accomplish any relevance among particular goods and services and the categories listed under Nice Classification.
For further details, please refer to, the Goods and Services Manual — Class headings – Canadian Intellectual Property Office.
Examples of NICE classification:
- Class 16 – paper & printed goods
- Class 36 – insurance & financial services
There is a possibility that goods and services provided by one corporation fall under more than one classification. For example, ABC company sells furniture (various kinds) and provides moving services as well. In that case, the corporation would generally be classified under Class 20 and Class 39.
Trademark Region
Trademark rights are contemplated to be recognizable in every nation or jurisdiction in which they are acquired just like other Intellectual Property Rights. Every jurisdiction is authorized to perceive and safeguard brand name rights in a way that fulfills its policy objectives.
The most common question that comes to anyone’s mind seeking trademark registration is in which countries should I register my mark. Well, a simple and realistic answer to that is to consider registering your mark in whatsoever countries or jurisdictions you are planning to serve goods and services under that mark. Also, one often tends to forget to register the mark in the country of production of goods. It is one of the major areas to consider while registering to avoid trademark infringement or any other legal issues.
Production line Consideration
For example, A US company trades their own brand product for sale in Canada and they produce it in China. In order to protect their brand and product, the brand owner shell registers the trademark in all three countries. therefore the protection coverup the full production line.
Another example about the production line involves a different situation that describes trademark registration. A Canadian Brand sells different products manufactured in different countries.
In this case, they produce their cups in India, T-shirts in China and plates in Taiwan. The cups sold in India are only sold in India, therefore the company does not need to trademark them in China or Taiwan. We advise registering your trademark in the corresponding country of manufacturing as well.
Development Timeline Consideration
It is very crucial, in the initial stages of doing a business, to plan how and where you will be developing your business. For instance, a US company has been doing business in the US for 10 years and plans to expand its business in China. At that time they file for trademark registration and their applications get denied. As per the examiner report, the trademark belongs to another company in China. As mentioned in Trademark Rights: First-to-use vs First-to-file – 1stIP.com as well, one of the drawbacks associated with first-to-file trademark systems is that they inadvertently encourage “trademark squatters” to register potentially lucrative marks. They do so only to hold them hostage to the highest bidder. Also, without any intent to ever use the mark in commerce themselves.
This means that if your company was not the first to file in a first-to-file country, it may need to buy or license the trademark from the existing trademark owner or rebrand its products for that market.
Perhaps the only way to avoid this problem is to make sure that you register your trade mark in these countries before anyone else.
