Every entrepreneur interested in registering a trademark, under the banner of which they conduct their business activity, will encounter the concept of trade classes at the very beginning of the official route, i.e. when filling in the application.
Commodity classes are categories to which products and services are assigned. Choosing the right ones is extremely important because they are used to indicate the scope of legal protection and help to determine exactly the area in which the trademark is to be protected. Each class defines specific products or services, and registering a mark in a given class means that protection will only extend to those. Making the wrong choice may therefore result in limitation or inability to defend against infringement. It is necessary to choose classes that will provide effective brand protection.
The system of commodity classes is based on the International Classification of Goods and Services (the so-called Nice Classification), which divides products and services into 45 classes. Its name comes from the Agreement concluded at the Nice conference in 1957, and Poland has been a signatory to it since1997. The first 34 classes of the Nice Classification include goods such as e.g. cosmetics or clothing, and the remaining 11 classes areservices, such as catering or education. Depending on the business profile, the entrepreneur will therefore choose to register the mark, e.g. in class 30 (coffee, tea) and 43 (catering services) if they run a café, while if they sell clothes, they should apply for the mark in class 25 (clothing) and possibly 35 (retail).
Legal traps in the commodity classes
It would seem that indicating the right classes should not cause problems. Nothing could be more wrong, especially in the case where the entrepreneur applies for a trademark independently without consulting a patent attorney. Indication of an incorrect class is one of the more common errors, as classes are included in a broad context, and often too small a number of classes or too wide a list of goods and/or services from one class is indicated. It should be borne in mind that after submitting the application, it is not possible to supplement the classification. The Patent Office will not agree to any changes that would affect the scope of the requested protection – pursuant to Article 144¹ Industrial Property Law - If, after initiating the proceedings, the applicant introduced additions or amendments to the trademark application that are not allowed by the provisions of the Act, the Patent Office issues a decision refusing to take into account such additions and amendments. However, if the entrepreneur would like to add a class to an already submitted application, it will be necessary to make a new one, and in such a situation there is a risk that a collision brand will be registered, which may cause unnecessary complications.
Entrepreneurs often want to ensure maximum protection while incurring minimal financial outlays. Therefore, they indicate everything that fits into the class they are interested in. An incentive to act in this way is the fact that the Patent Office collects a fee from the number of indicated classes, regardless of the number of goods contained therein. However, this error may prove costly, as the law requires the use of a proprietary brand within 5 years from the date of registration, under pain of extinction by a competing entrepreneur, which may generate many more losses and costs. Then it is necessary to demonstrate that in fact all goods and services that were indicated in the application were offered.
Act with the future of the brand in mind
The choice of classes should be well thought out and put into a broader, forward-looking context, not only focusing on the current range of services and/or goods offered, but also taking into account business expansion plans that may affect the need to mark additional goods or services with the applied mark. Keeping in mind that it is not possible to extend the protection of the mark to new goods or services after submitting the application, it is a good idea to consult a patent attorney. This type of experienced expert can indicate which options are worth considering in terms of future development and which classes best suit the nature of a given activity.
Choosing the appropriate classes leads to avoiding problems related to registration, such as e.g. the risk of collision with another entity. It will also make the mark better protected against violations. Therefore, before submitting the application, it is worth checking whether there are any similar signs in a given class. If the entrepreneur begins to use a similar sign in the same class, the owner of the mark will be able to assert their rights.
Effective protection is an investment
Entrepreneurs who operate in many industries should protect their brand against unlawful use by competitors in various market sectors by applying for the mark in more classes. This involves higher fees, but it will effectively protect the brand if these classes actually correspond to the company's activities.
The choice of appropriate classes in a trademark application has a significant impact on whether the entrepreneur's brand will be effectively protected. Before submitting an application to the patent office, it is worth conducting a thorough analysis of one's activities and development plans for the coming years, as well as consulting a specialist who will help protect the company against the risk of ineffective protection and unfair competition.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
