This article first appeared in our latest issue of Scran & sIPs where we look at machine learning and immersive technology in the food & drink industry, the Patent Box tax incentive, trade mark use requirements, as well as the trade mark classification system as presented by Julie, below.
When applying for a trade mark and for searching purposes, it is necessary to list the goods and/or services for which the mark is intended to be used. Goods and services are categorised into different “Classes” by reference to the Nice Classification. Each Class corresponds with a different category of goods or services and there are 34 Classes for goods and 11 Classes for services.
With the exception of trade marks with a reputation, a mark is protected only in respect of goods and services identical or similar to those covered by the registration. This is why the drafting of the specification is a crucial step of obtaining trade mark protection.
The number of Classes required will have an effect on costs for filing an application. A very specialised business may only need one or two Classes but others may need to cover a variety of goods and services falling in different Classes.
Using “ski trip” as theme for this edition of Scran & sIPs, we take a glimpse at how classification works and what each Class may cover:
Class 1 mainly includes chemical products for use in industry, science and agriculture. It covers “snow melting agents”, “chemical preparations for melting snow and ice” and “anti-freeze”.
Class 2 mainly includes paints, colorants and preparations used for protection against corrosion. It covers “oils for the preservation of wood” and “wood lacquers”.
Class 3 mainly includes non-medicated toiletry preparations, as well as cleaning preparations for use in the home and other environments. It covers “sun cream” and “lip balm”.
Class 4 mainly includes industrial oils and greases, fuels and illuminants. It covers “wax for skis and snowboards” and “candles”.
Class 5 mainly includes pharmaceuticals and other preparations for medical or veterinary purposes. It covers “preparations for treating colds” and “vitamin preparations”.
Class 6 mainly includes unwrought and partly wrought common metals, including ores, as well as certain goods made of common metals. It covers “snow irons [crampons]” and “snowboard locks of metal”.
Class 7 mainly includes machines and machine tools, motors and engines. It covers “snowplows”, “electric ski edge sharpening tools” and “ice crushing machines”.
Class 8 mainly includes hand-operated tools and implements for performing tasks, such as drilling, shaping, cutting and piercing. It covers “snow shovels”, “mountaineering ice hammers” and “manually-operated edge sharpeners for skis and snowboards”.
Class 9 mainly includes apparatus and instruments for scientific or research purposes, audiovisual and information technology equipment, as well as safety and life-saving equipment. It covers “avalanche probes featuring sensors for measuring snow depth”, “ski helmets” and “snow goggles”.
Class 10 mainly includes surgical, medical, dental and veterinary apparatus, instruments and articles generally used for the diagnosis, treatment or improvement of function or condition of persons and animals. It covers “crutches” and “medical ice packs”.
Class 11 mainly includes environmental control apparatus and installations, in particular, for the purposes of lighting, cooking, cooling and sanitizing. It covers “snow cannons”, “snow-making machines” and “raclette sets”.
Class 12 mainly includes vehicles and apparatus for the transport of people or goods by land, air or water. It covers “ski lifts”, “snowmobiles”, “snow chains for motor vehicles” and “snow sledges for transportation”.
Class 13 mainly includes firearms and pyrotechnic products. It covers “firecrackers” and “signal rocket flares”.
Class 14 mainly includes precious metals and certain goods made of precious metals or coated therewith, as well as jewellery, clocks and watches, and component parts therefor. It covers “sports watches” and “medals”.
Class 15 mainly includes musical instruments, their parts and their accessories. It covers “alpine horns”.
Class 16 mainly includes paper, cardboard and certain goods made of those materials, as well as office requisites. It covers “passport holders”, “travel guides” and “Christmas cards and gift wrap”.
Class 17 mainly includes electrical, thermal and acoustic insulating materials and plastics for use in manufacture in the form of sheets, blocks and rods, as well as certain goods made of rubber, gutta-percha, gum, asbestos, mica or substitutes therefor. It covers “anti-cold insulating compositions”.
Class 18 mainly includes leather, imitations of leather and certain goods made of those materials. It covers “mountaineering sticks” and “suitcases”.
Class 19 mainly includes materials, not of metal, for building and construction. It covers “woven fabrics (non-metallic -) for the protection of slopes against erosion” and “chimneys, not of metal”.
Class 20 mainly includes furniture and parts therefor, as well as certain goods made of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastic. It covers “storage racks for ski equipment” and “camping mattresses”.
Class 21 mainly includes small, hand-operated utensils and apparatus for household and kitchen use, as well as cosmetic and toilet utensils, glassware and certain goods made of porcelain, ceramic, earthenware, terra-cotta or glass. It covers “ski wax brushes”, “cheese boards” and “bottle openers”.
Class 22 mainly includes canvas and other materials for making sails, rope, padding, cushioning and stuffing materials and raw fibrous textile materials. It covers “tents and ropes for mountaineering”.
Class 23 mainly includes natural or synthetic yarns and threads for textile use. It covers “hand knitting wools”.
Class 24 mainly includes fabrics and fabric covers for household use. It covers “woollen blankets” and “sleeping bags for camping”.
Class 25 mainly includes clothing, footwear and headwear for human beings. It covers “snowsuits” and “ski and snowboard shoes”.
Class 26 mainly includes dressmakers' articles, natural or synthetic hair for wear, and hair adornments, as well as small decorative items intended to adorn a variety of objects. It covers “artificial garlands and wreaths” and “competitors' numbers”.
Class 27 mainly includes products intended to be added as coverings to previously constructed floors and walls. It covers “mats of woven rope for ski slopes”.
Class 28 mainly includes toys, apparatus for playing games, sports equipment, amusement and novelty items, as well as certain articles for Christmas trees. It covers “skis”, “snowshoes”, “snow sleds for recreational use”, and “artificial snow for Christmas trees”.
Class 29 mainly includes foodstuffs of animal origin, as well as vegetables and other horticultural comestible products which are prepared or preserved for consumption. It covers “cheese fondue” and “charcuterie”.
Class 30 mainly includes foodstuffs of plant origin, except fruits and vegetables, prepared or preserved for consumption, as well as auxiliaries intended for the improvement of the flavour of food. It covers “hot chocolate” and “Christmas puddings”.
Class 31 mainly includes land and sea products not having been subjected to any form of preparation for consumption, live animals and plants, as well as foodstuffs for animals. It covers “fresh truffles”, “live oysters” and “Christmas trees”.
Class 32 mainly includes non-alcoholic beverages, as well as beer. It covers “energy drinks” and “protein-enriched sports beverages”.
Class 33 mainly includes alcoholic beverages, essences and extracts. It covers “mulled wine” and “digestifs [liqueurs and spirits]”.
Class 34 mainly includes tobacco and articles used for smoking, as well as certain accessories and containers related to their use. It covers “matches” and “cigar cases”.
Class 35 mainly includes services involving business management, operation, organization and administration of a commercial or industrial enterprise, as well as advertising, marketing and promotional services. It covers “retail services in relation to skiing equipment” and “promotion of travel”.
Class 36 mainly includes services relating to banking and other financial transactions, financial valuation services, as well as insurance and real estate activities. It covers “holiday insurance services”.
Class 37 mainly includes services in the field of construction, as well as services involving the restoration of objects to their original condition or their preservation without altering their physical or chemical properties. It covers “snow removal services” and “repair or maintenance of snow plows”.
Class 38 mainly includes services that allow at least one party to communicate with another, as well as services for the broadcasting and transmission of data. It covers “geolocation services [telecommunications services]”.
Class 39 mainly includes services for the transport of people, animals or goods from one place to another by rail, road, water, air or pipeline and services necessarily connected with such transport, as well as the storing of goods in any kind of storage facility, warehouses or other types of building for their preservation or guarding. It covers “travel reservation and information services” and “arranging of holiday transport”.
Class 40 mainly includes services rendered by the mechanical or chemical processing, transformation or production of objects or inorganic or organic substances, including custom manufacturing services. It covers “cheese processing services in the nature of ripening, maturing and aging of cheese”.
Class 41 mainly includes services consisting of all forms of education or training, services having the basic aim of the entertainment, amusement or recreation of people, as well as the presentation of works of visual art or literature to the public for cultural or educational purposes. It covers “ski and snowboard instruction”, “provision of skiing facilities” and “rental of ski equipment”.
Class 42 mainly includes services provided by persons in relation to the theoretical and practical aspects of complex fields of activities, for example, scientific laboratory services, engineering, computer programming, architectural services or interior design. It covers “providing weather condition information affecting ski conditions”.
Class 43 mainly includes services provided in relation to the preparation of food and drink for consumption, as well as services for providing temporary accommodation. It covers “holiday accommodation services” and “restaurants”.
Class 44 mainly includes medical care, including alternative medicine, hygienic and beauty care given by persons or establishments to human beings and animals, as well as services relating to the fields of agriculture, aquaculture, horticulture and forestry. It covers “sauna services” and “health spa services”.
Class 45 mainly includes legal services, security services for the physical protection of tangible property and individuals, personal and social services rendered by others to meet the needs of individuals. It covers “mountain rescue services”.
The classification system can appear quite daunting when businesses first look at trademarking their brand. It is essential to have a discussion with your trade mark attorney and cover all goods/services that your mark is currently, and/or intended to be, used for.