Do you know “Dove” soap? 

And what about “Dove” chocolate? 

 

These two “Doves” perfectly co-exist both on the market and in the trademark register. 

 

This is possible because the trademark of Unilever is registered for soaps and beauty products, while the very similar one of Mars Inc. is registered for chocolate. There could be no likelihood of confusion on behalf of customers as long as the goods remain so different. In the end, it is very unlikely that one would start biting the bar of soap (although using chocolate in one’s beauty routine could very well be argued). 

 

The above two are the famous examples, though there are in fact more “Doves” out there, like:

• A wordmark “Dove” registered in Benelux for, among others, fresh fruits and vegetables;
• A wordmark “Dove” registered in Europe for, among others, kitchen furniture, bedside tables and mirrors;
• A figurative trademark “Dove” registered in Europe for, among others, “telecommunications, in particular, radio and television broadcasting”.

 

All of these (and more) trademarks co-exist because their lists of goods and/or services are different. And that’s ok. 

 

The purpose of a trademark is to distinguish the goods and/or services of one company from that of the other. To ensure that this purpose is fulfilled when a company applies for a trademark, it has to choose the exact goods and/or services from the 45 classes of Nice Classification. 

 

When the application is prepared by a professional lawyer, specialised in intellectual property protection matters, s/he will take care of the list for your trademark. However, if you intend to do it yourself, make sure to avoid the mistakes below: 

 

• Mistake 1: confusing the actual service you intend to render with the way you plan to market it

For example, you are planning on offering a meal-box subscription service for cats. To market it you intend to give webinars, engage in social media advertising, sponsor some events etc. However, your business remains meal preparation and retail, not webinars and sponsoring. 

 

• Mistake 2: selecting a goods’ class instead of a services’ class

This one is equally frequent. If what you intend to offer is “print and online advertising services”, your primary class is not class 16: “paper goods”. You are not going to be making paper, you will be offering a service using this paper, which you will source from someone else. 

Or for example, you have a start-up that intends to bring new software on the market. Do you think that applying for “software” of class 9 will get you covered? Think again. It depends on the type of software you have in mind. 

Is it software that users can download to their devices? Or perhaps, you are in fact running this software on your own servers on behalf of your customers? In the latter case, this "software as a service" will rather fall under service class 42.

 

• Mistake 3: choosing too few classes

Sticking with the example of “advertising services”. If you intend to be offering development of advertising concepts, writing and publication of publicity texts, then you should look into class 35. However, if you also intend to do the graphic design of these promotional materials, then this belongs in class 42. 

Also, remember that once you have applied for a trademark, you cannot later expand the list of goods and/or services. If you want to add something later, you will need to apply for a new trademark. Therefore, having a healthy idea of what you might be offering next year or the year after with this trademark, is important at the moment of filing. 

Obviously, when you were offering graphical design services twenty years ago, you could not have imagined that you would eventually move into 3D printing, yet some strategic moves could be predicted and properly protected in advance. 

 

• Mistake 4: choosing too many classes

Also too many are bad. Of course, if you intend to use your trademark in connection with all of them, go ahead (bearing in mind that the risk of infringing on someone else’s rights will likewise be enhanced). However, if you never plan on making cages for household pets, do not put them on your list. 

 

• Mistake 5: applying for the class heading

This is linked to the previous mistake. In applying for the class heading, you risk having your list too broad (even though, this time too broad within one class). 

According to the Communication 4/03 of the President of the Office (EUIPO, ex. OHIM) of 16 June 2003, “the use of a general indication found in a class heading will embrace all the individual goods or services falling under that general indication”. 

In other words, these class headings are not specific enough to ensure the optimal protection for your trademark. Both absolute and relative grounds for refusal of its registration depend on the list of goods and services. It could very well be that for certain items on the list your trademark will be distinctive enough, while for the others it could be found descriptive. As a consequence, trademark registration could be refused.

 

The five mistakes listed above are just the most common mistakes related to the list of goods and/or services, however, of course, there are more possible pitfalls.

The bottom line is: the list of goods and/or services is very important, as it determines the scope of protection for your trademark. Thus, if you intend to apply for your trademark yourself, do spend some time researching the matter. 

Your trademark is meant to serve your interests, to give you a competitive advantage and to be part of your IP strategy. On the condition, that your application is done right, of course...

 

If you do not want to do it all yourself and would prefer a knowledgeable IP lawyer to help you get a trademark that would best serve the interests of your particular business, we are glad to be at your service! 

 

Feel free to drop us a line at info@starks.be

 

Starks: your best legal sparring partner

 

* Truth must be told that there is quite some small print in connection with the above described: e.g. well-known trademarks will be protected also outside the list of goods they are registered for; the different classes could have complementary goods, that in case of conflict could be found similar enough to warrant the conclusion of the existence of the likelihood of confusion, while some goods within the same class could be different enough for the trademark co-existence… etc.