Tuesday 15 December 2009

Trademarks: Identifying your Business Classes

Trademarks are always registered against particular classes of goods (classes 1 - 34) and services (classes 35 - 45), which comprise the commercial areas of business to which your trademark relates (i.e. which your mark will be used to promote).

Note that a trademark can be registered against more than one class of goods or services. This is important since registration against a single class only protects the registered trademark's use in relation to that class of goods or services. For example, if you wanted to register a brand name for a particular type of leather suitcase then this would be registered under class 18. You would then be protected against a competitor marketing a suitcase using that same or a similar brand name. However, you would not be protected against a tractor manufacturer using the same or similar mark to market one of their tractors (under class 12).

Your registered trademark will only protect you in relation to (and be limited to) the particular classes of goods and services that you chose for your trademark on registration. It is therefore extremely important that you correctly identify the particular goods and services which you intend to use with your trademark. You will also need to bear in mind the costs implications when you come to selecting your classes. In the UK the Trademark Registry will charge an additional fee of £50 for each additional class of goods and services you include with your application in excess of a single class. For EU Community trademarks the OHIM charges an additional fee of €150 for each class of goods and services you include with your application in excess of 3 classes.There is also a similar fee to be paid on registration.

The relevant classes are set out below:

Class 1
Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
Also in this class are chemicals for the making of products belonging to other classes.
Does not include fungicides, herbicides, insecticides or preparations for destroying vermin which are in Class 5.
Class 2
Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
Does not include paint boxes for children which are in Class 16 or insulating paints and varnishes which are in Class 17.
Class 3
Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Also in this class are deodorants for personal use.
Does not include air deodorising preparations which are in Class 5 or scented candles which are in Class 4.
Class 4
Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.
Also in this class are combustible fuels, electricity and scented candles.
Class 5
Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Also in this class are foods and beverages which are adapted for medical purposes.
Does not include supportive bandages which are in Class 10.
Class 6
Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.
Also in this class are unwrought and partly wrought common metals as well as simple products made of them; metallic windows and doors and also metallic framed conservatories.
Class 7
Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.
Also in this class are parts of engines and motors; some parts for vehicles, (for example exhausts for vehicles); vacuum cleaners.
Does not include engines or motors for land vehicles which are in Class 12 or specialist machines (for example, weighing machines are in Class 9).
Class 8
Hand tools and implements (hand operated); cutlery; side arms; razors.
Also in this class are electric razors and hair cutters; cutlery made of precious metal.
Does not include surgical cutlery which is in Class 10 or hand held and electrically powered tools, (for example, electric drills are in Class 7).
Class 9
Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers; calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Also in this class are computer hardware and firmware; computer software (including software downloadable from the Internet); compact discs; digital music (downloadable from the Internet); telecommunications apparatus; computer games equipment adapted for use with an external display screen or monitor; mouse mats; mobile phone accessories; contact lenses, spectacles and sunglasses; clothing for protection against accident, irradiation or fire.
Does not include printed computer manuals which are in Class 16, self contained computer games equipment which is in Class 28, various electrical items (for example, electric screwdrivers are in Class 7 and electric toothbrushes are in Class 21).
Class 10
Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials.
Also in this class are electro-medical or surgical apparatus; massage apparatus.
Does not include contact lenses, spectacles or sunglasses which are in Class 9 or wheelchairs which are in Class 12.
Class 11
Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Also in this class are air conditioning apparatus; electric kettles; gas and electric cookers; vehicle lights.
Class 12
Vehicles; apparatus for locomotion by land, air or water.
Also in this class are motors and engines for land vehicles and certain other parts and fittings, (for example, vehicle body parts and transmissions).
Does not include certain parts or fittings for vehicles, (for example, exhausts and starters are in Class 7, lights and air conditioning units are in Class 11) or children's toy bicycles which are in Class 28.
Class 13
Firearms; ammunition and projectiles, explosives; fireworks.
Does not include apparatus for use in playing paint ball combat games which are in Class 28.
Class 14
Class 14
Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.
Also in this class are clocks and watches; costume jewellery.
Does not include certain precious metal items, (for example, cutlery is in Class 8, pens are in Class 16).
Class 15
Musical instruments.
Also in this class are stands and cases adapted for musical instruments.
Class 16
Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.
Also in this class are disposable nappies of paper for babies; printed publications.
Does not include adhesives for industrial purposes which are in Class 1, electronic publications (downloadable) which are in Class 9, providing electronic publications (not downloadable) which are in Class 41 or wallpaper which is in Class 27.
Class 17
Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.
Also in this class are semi-finished plastics materials for use in further manufacture.
Does not include unprocessed plastics in the form of liquids, chips, granules etc which are in Class 1.
Class 18
Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Also in this class are handbags, rucksacks, purses; clothing for animals.
Does not include leather clothing which is in Class 9 (for protection against injury) or in Class 25 (ordinary apparel); certain specialist leather articles, (for example cheque book holders are in Class 16).
Class 19
Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
Also in this class are non-metallic framed conservatories, doors and windows.
Class 20
Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
Also in this class are both metallic and non-metallic furniture including garden furniture; pillows and cushions.
Does not include duvets or covers for pillows, cushions or duvets which are in Class 24, furniture adapted for medical use which is in Class 10 or furniture adapted for laboratory use which is in Class 9.
Class 21
Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; un-worked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
Also in this class are both electric and non-electric toothbrushes.
Does not include electric kitchen appliances, (for example electric food processors are in Class 7, electric kettles are in Class 11) or kitchen and table cutlery which is in Class 8.
Class 22
Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.
Also in this class are bags and sacks for transporting bulk materials.
Class 23
Yarns and threads, for textile use.
Class 24
Textiles and textile goods, not included in other classes; bed and table covers.
Also in this class are textile piece goods; textiles for making articles of clothing.
Does not include table linen of paper which is in Class 16 or electric blankets (not for medical use) which are in Class 11.
Class 25
Clothing, footwear, headgear.
Does not include clothing for the prevention of accident and injury which is in Class 9, surgeons' clothing which is in Class 10 or clothing for animals which is in Class 18.
Class 26
Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
Also in this class are dressmakers' articles; badges for wear (other than precious metal badges).
Class 27
Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).
Also in this class are wallpaper.
Does not include mouse mats which are in Class 9, mats specifically shaped/adapted for vehicles which are in Class 12 or travellers' rugs which are in Class 24.
Class 28
Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
Also in this class are hand-held computer games equipment which is self contained (not adapted for an external display screen or monitor).
Does not include computer games equipment adapted for use with an external display screen or monitor or software for all types of electronic games which are in Class 9.
Class 29
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats.
Also in this class are prepared meals and snacks whose main ingredients are proper to this class, (for example, soups and potato crisps).
Does not include sandwiches which are in Class 30 or foodstuffs for animals which are in Class 31.
Class 30
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.
Also in this class are prepared meals and snacks whose main ingredients are proper to this class, (for example, pizzas, pies and pasta dishes).
Does not include foodstuffs for animals which are in Class 31.
Class 31
Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables, seeds, natural plants and flowers; foodstuffs for animals; malt.
Also in this class are all food and beverages for animals.
Does not include tea, coffee or chocolate-based beverages which are in Class 30.
Class 32
Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
Also in this class are shandy, de-alcoholised drinks, non-alcoholic beers and wines.
Class 33
Class 33
Alcoholic beverages (except beers).
Also in this class are wines, spirits and liqueurs; alcopops.
Does not include beers which are in Class 32.
Class 34
Tobacco; smokers' articles; matches.
Also in this class are lighters for smokers.
SERVICES
Class 35
Advertising; business management; business administration; office functions.
Also in this class are the organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; trade fairs; opinion polling; data processing; provision of business information; certain specific services provided by retailers.
Does not include computer programming which is in Class 42 or raising finance for business which is in Class 36.
Class 36
Insurance; financial affairs; monetary affairs; real estate affairs.
Also in this class are building society services; banking (including home banking); stockbroking; financial services provided via the Internet; issuing of tokens of value in relation to bonus and loyalty schemes; provision of financial information.
Does not include accountancy which is in Class 35, lottery services which are in Class 41 or conveyancing services which are in Class 45.
Class 37
Building construction; repair; installation services.
Also in this class are installation, maintenance and repair of computer hardware; painting and decorating.
Does not include installation, maintenance and repair of computer software which is in Class 42.
Class 38
Telecommunications.
Also in this class are all telecommunications services, (for example, e-mail services and those provided for the Internet); providing user access to the Internet (service providers); operating of search engines.
Does not include creating, maintaining or hosting web sites which are in Class 42.
Class 39
Transport; packaging and storage of goods; travel arrangement.
Also in this class are distribution of electricity; travel information.
Does not include travel insurance which is in Class 36 or booking holiday accommodation which is in Class 43.
Class 40
Treatment of materials.
Also in this class are the development, duplicating and printing of photographs; generation of electricity.
Class 41
Education; providing of training; entertainment; sporting and cultural activities.
Also in this class are electronic games services provided by means of the Internet; the provision of on-line electronic publications and digital music (not downloadable) from the Internet.
Does not include downloadable on-line electronic publications or digital music which are in Class 9 or educational materials in printed form which are in Class 16.
Class 42
Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
Also in this class are installation, maintenance and repair of computer software; computer consultancy services; the following Internet related services are also proper to this class: design, drawing and commissioned writing for the compilation of web sites; creating, maintaining and hosting the web sites of others.
Does not include providing access to the Internet or portal services which are in Class 38, or garden design services which are in Class 44.
Class 43
Services for providing food and drink; temporary accommodation.
Also in this class are restaurant, bar and catering services; provision of holiday accommodation; booking/reservation services for restaurants and holiday accommodation.
Does not include provision of permanent accommodation which is in Class 36 or the arranging of travel by tourist agencies which is in Class 39.
Class 44
Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
Also in this class are dentistry services; medical analysis for the diagnosis and treatment of persons (such as x-ray examinations and taking of blood samples); pharmacy advice; garden design services.
Does not include scientific research for medical purposes (such as research into cures for terminal diseases which is in Class 42), ambulance transportation which is in Class 39, health clubs for physical exercise which are in Class 41 or retirement homes which are in Class 43.
Class 45
Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.
Also in this class are dating services; funeral services and undertaking services; fire-fighting services; detective agency services; compilation, creation and maintenance of a register of domain names.
Does not include beauty care services for human beings or animals which are in Class 44 or educational services which are in Class 41.


Wednesday 21 October 2009

International Trade Mark Protection

The Madrid system is a multi-national trademark system based on two international treaties:-
  1. the Madrid Agreement; and
  2. the Madrid Protocol.
The system is managed by the World Intellectual Property Organisation (WIPO) which is based in Geneva, Switzerland.

This system means that you no longer have to apply to several individual different countries to register your mark, which can take a lot of time and be much more expensive. By filing one application in one jurisdiction with one set of fees, the Madrid System has proved to be a much more cost effective way of managing international trademarks - provided of course that the country you wish to register are part of the Madrid Agreement.

There are, of course, risks in using the system in that any refusal, withdrawal or cancellation of the basic application or basic registration within five years of the registration date of the international registration will lead to the refusal, withdrawal or cancellation of the international registration to the same extent.

Another disadvantage is that not all countries participate in the agreement, check below to see if your country is listed:-

Albania

Antigua & Barbuda

Armenia

Australia

Austria

Azerbaijan

Bahrain

Belarus

Belgium

Bhutan

Bosnia and Herzegovina

Botswana

Bulgaria

China

Croatia

Cuba

Cyprus

Czech Republic

Denmark

Estonia

European Union (via

Community Trade Mark)

Finland

France

Georgia

Germany

Ghana

Greece

Hungary

Iceland

Iran

Ireland

Italy

Japan

Kenya

Korea (North)

Korea (South)

Kyrgyzstan

Latvia

Lesotho

Liechtenstein

Lithuania

Luxembourg

Macedonia

Madagascar

Moldova

Monaco

Mongolia

Morocco

Mozambique

Namibia

Netherlands

Norway

Poland

Portugal

Romania

Russian Federation

Sao Tome and Principe

Serbia & Montenegro

Sierra Leone

Singapore

Slovakia

Slovenia

Spain

Swaziland

Sweden

Switzerland

Syria

Turkey

Turkmenistan

Ukraine

United Kingdom

United States of America

Vietnam

Zambia


Those that aren't listed, aren't part of the agreement - so you may end up having to make separate applications to these countries.

If your home country is listed above, then you are able to use the system if you have a current trademark registration in your home country on a trademark application pending.

Applications are filed at the national Trade Mark office of the ‘home’ application or registration who pass the application to WIPO. WIPO conducts a formalities examination and then the application is granted covering all the countries specified. The Trade Mark Offices of the countries you've applied to then have 18 months to oppose the registration. An International Registration can only cover members of the Madrid Protocol (as listed above).

All rights in an International Registration date back to the day of filing, not the date on which the registration is granted.

To get some more advice on international trademarks, contact us.
 
Trademark Design Protection - Free Blogger Templates, Free Wordpress Themes - by Templates para novo blogger HD TV Watch Shows Online. Unblock through myspace proxy unblock, Songs by Christian Guitar Chords