Classification: Goods and/or services
Before we go further in the application process, let’s look at correctly classifying your trade mark. In the context of registered trade marks, this is an important frame of reference.
Trade marks are marks used in trade, and there is an enormous range of products and services on offer. One company sells chemicals, another steel fences, another electronic heat-sensitive monitors; and there are clothing, sweets, furniture, and car parts — and so on. These are all ‘goods’ for the purposes of trade mark registration. In terms of an agreement established internationally, goods are categorised into 34 different ‘classes’. For example, clothing falls into Class 25, jewellery into Class 14 and paints into Class 2.
Services are treated in the same way. For example, estate agency services fall into Class 36 and transport services into Class 39.
See the Nice Agreement for the classification of trade marks at www.wipo.int/classifications.
You will see from the registration certificate referred to (in the Introduction) that the trade mark SAIIPL is registered in Class 45, for the following services:
Legal services; legal research services; intellectual property research and consultancy services; arbitration services; copyright management services; domain name adjudication services; domain name consultancy services; intellectual property licensing and watching services; licensing of intellectual property; litigation services; mediation services; services rendered by organizations on behalf of its members included in this class.
It is a good description of the services that the South African Institute for Intellectual Property Law renders to the public.
It is not just a matter of finding out which class applies to your goods or services. You must also specify the particular goods or services within that class to which you will apply your trade mark.
Correctly specifying the goods or services with which you intend to trade under the mark is crucial. The registration of the trade mark means that you have a monopoly on the exploitation of that trade mark — but only for the goods (or services) specified in your entry in the trade marks register. Conversely, if your trade mark is not used in relation to the specified goods (or services) it can be cancelled. It does not help if you produce best-selling pool chemicals (Class 1) whereas your trade mark is registered for automatic pool cleaners (Class 7 and/or 11).
Correct classification can be tricky sometimes. If you are in doubt, speak to a qualified trade mark lawyer.