What is classification?
When you apply to register a trademark, you must specify the products and/or services for which it will be used. For administrative reasons, all products and services are divided into categories (classes).
The products and services that you choose, determine the scope of protection afforded by your trademark. In other words, your trademark rights will only apply to those products and services that you specify. Think carefully about which you choose, because you cannot add any extra ones to your trademark application once it has been filed. Also bear in mind that you must use your trademark for the products and services that you select.
Preparing your trademark application: choosing products and services
Before applying to register your trademark, you can get an idea of the terms that you might want to select. You can peruse them in TMClass, which is an interactive search tool that uses the Harmonised Database (HDB). The HDB is a joint database of products and services accepted by all member states of the European Union.
If you apply to register your trademark online with BOIP, you will search the same database when compiling the list of products and services in your application. The products and services which you select will then be automatically allocated to the right class. Online registration of a trademark in the Benelux for one class costs 244 euro. If you choose more, a supplement applies for each extra class.
And if your product/service is not mentioned?
If you can't find your specific product or service in the Harmonized Database you can enter your own text during the application process. Using your own text could delay the procedure, as the terms used are not yet featured in the HDB. We first need to check those terms that are not featured.
- Tip: If you already own a registered trademark with the same product and/or service description and in the same language as your new application you may import that text into the new application. Simply state the application number (not the registration number!) of your previous trademark registration and click on 'import', as shown in the picture below.
What do you need to take into acccount?
Which ones are?
Your trademark is best protected if you are as clear and comprehensive as possible in composing the list of goods and services. So don't just consider the goods and services for which you are using the trademark right now, but also what you are going to use it for in the future.
Example: At present you sell clothing. But within two to five years you consider marketing bags and jewellery, which make it sensible to add these goods to your list.
Keep in mind that the basis fee only applies to one class. Should you select more, there will be a supplement for each additional class.
Which ones are not?
When applying online for a trademark registration, the classification tool gives you multiple options. Some of the terms are in differing wordings, while retaining the same meaning.
Example: 'organising relaxing events' alongside 'organising events for relaxation purposes'. You only need to check one of those.
It may seem a good idea to list a whole lot of different goods and services. But you need to realize that you have to use the trademark for all these products and services, within five years. If not, you could lose trademark right for these goods and services. Moreover, there is a greater chance that you will get into conflict with another trademark.
