Choice of goods and services when registering a trademark.
- The brand owner is responsible for the quality of the goods and services it provides and for maintaining the brand image. It is therefore important to only promise what you can actually deliver. When you and your team are deciding what will stand behind your brand, you need to be honest about what you are offering. This fundamental rule in business circles is also enshrined in the trademark registration procedure.
- A trademark is registered only for certain specified goods and/or services and receives protection only for them. Proper identification of goods and services is crucial. If you are planning to develop a wine business, you should register your trademark for the class “wine”. But if you are opening your own winery along with a hotel, restaurant and swimming pool, the mark should also receive protection for other services, in this case temporary accommodation and restaurant services. It follows that, when choosing goods and services, the identity of the company should be sought first and foremost. What is at the heart of your business? What are the values of your company? Apple is a technology company that makes wonderful computers, smartphones and other devices. Your favorite wine is made by a company that specializes in wine. A winery is not just a hotel, it’s a place that creates an overall wine experience. Every business has a huge potential to be a driving force in a particular field. The key word here is precisely ‘certain’.
From a legal point of view, including too many goods and services can lead to a request to cancel the mark for non-use or to opposition. It should be noted that the requirement of genuine use of the mark is indeed serious. Courts and IP offices accept that the use of the mark cannot be symbolic, as the main function of the mark is to serve as a guarantee of the origin of the goods/services, allowing consumers to distinguish them from the goods/services of competing companies.
When determining the goods and services for which your mark will be registered, you must use the Nice Classification. It contains 45 classes, with each class having a heading and subheading giving information about the type of goods and services. Undoubtedly the best guide to classifying goods and services is the TM Class search engine
The Nice Classification lists goods and services but does not provide a legal definition of either “good” or “service”.
In practice, I have very often encountered mistakes precisely in the distinction between goods and services, which leads to inaccurate trademark registration applications, and thus to problems for the business after the fact.
It is clear that a commodity is an object to be traded. It is machinery, equipment, kitchen utensils, furniture and much more. A service, on the other hand, is some action /benefit, value/ that one party provides to another. If you advertise your own goods, you are not performing a service. But if you have an advertising agency, you are precisely performing a service for a third party. If you have your own auto repair shop, you are providing the service of “fixing cars”. But if you manufacture car parts, you offer goods that you must list in your trademark registration procedure.
Once you have identified the goods and services for which registration is sought, you should also specify them if possible. For example, if you manufacture dairy products, you should apply for the mark for ‘cheese’, ‘cheese curds’, ‘cottage cheese’ and the like. In this respect, it would be a mistake if you applied for a service mark for ‘providing food products on a contract basis’, even though dairy products are food products. A registered trademark for the class ‘wine’ protects winemakers who produce e.g. only white wine. If you own a restaurant and also produce food products that you serve in the restaurant, you must register your mark for both the restaurant-related class and the food-specific class. The well-known Bulgarian trademark “Happy” is registered for restaurant services as well as for packaging and storage of goods, transport, food and beverages.
Especially in the provision of services, the contribution of digitalisation and the possibility to provide services under a specific brand in dozens of countries cannot be overemphasised.
On the other hand, modern companies often offer both goods and services. Many high-tech companies that create software can quickly “turn” to manufacturing activities, e.g. car production. Again, I note that the choice of goods and services should be based on the identity of the company.
Properly defining goods and services means solid brand protection and a prerequisite for long-term success for the company.