With Halloween just around the corner, it is definitely the right time for you to launch your new brand of candies! Yes, but how to make sure that your trademark is being protected as it should for all your goods of interest?
If you are a keen reader of this blog, you will know by now: your trademark is “special”, in that it is subject to the principle of “specialty”: the protection conferred by a trademark gives its owner an exclusive right only in the field of activity defined at the time of filing. But how is this field of activity legally defined? Quite simply, by the goods and services specified in your trademark application form (and later, in the trademark registration certificate).
Please bear in mind, however, that it is not possible to subsequently add goods or services to an existing application or registration (you would then have to file a new trademark application and pay the official filing fees to the INPI).
Right from the start, it is therefore essential to list all the goods and services you intend to market or supply in your application.
But there is more! In order to precisely define the scope of protection of a trademark, an official international classification system for the various goods and services was created.
This system, better known as the “Nice Classification”, lists a wide array of categories of goods and service under different “classes” (45 classes in the current system).
For example, cosmetics, soaps, perfumes, essential oils, make-up, etc. all fall in class 3, software, mobile applications, smartphones and computers are in class 9, clothing, footwear, headgear and other clothing items are in class 25.
Please note, however, that certain broad categories of goods have been split across several classes.
Food products, for example, fall into class 29 for "foodstuffs of animal origin, vegetables and other horticultural comestible products which are prepared or preserved for consumption" (meat, fish, eggs, milk, cheese, etc.), class 30 for "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" (coffee, tea, cocoa, rice, pasta, flour, bread, pastries, sauces and other condiments…and of course: chocolates, candies and other sugary treats will be at home here) and class 31 for "land and sea products not having been subjected to any form of preparation for consumption" (fresh fruit and vegetables, fresh mushrooms, etc.).
Similarly, beverages fall under both class 32 for non-alcoholic beverages and beers, and class 33 for wines and other alcoholic beverages, essences and extracts.
It is also possible to protect your trademark for services, understood as services provided to third parties.
For example, an advertising agency provides services to its clients to help them communicate and promote their products. These advertising and promotional services fall into class 35.
That being said, it is important to bear in mind that this classification of goods and services is purely administrative.
In other words, the scope of protection of your trademark is not determined by the classes covered, but by the actual specifications of goods and services precisely designated within these classes.
It is therefore essential to make sure that your trademark covers all the goods and services corresponding to your intended business.
For information, the various classes and official specifications of goods and services proposed by the Nice Classification can be browsed here.
Finally, since the French INPI (like the vast majority of intellectual property offices) requires the payment of filing fees for each class of goods and services covered in the application, one may perceive the importance of carefully selecting the classes to be covered…
In this respect, it is advisable to hire the services of an Intellectual Property Attorney in order to precisely determine the classes and goods and services relevant to your project, and thus ensure that your trademark has the best possible scope of protection, while keeping filing costs under control.
Find all our articles on intellectual property on our blog #IPBoardingPass.