See Trade Dress

A key part of a trade mark registration is the list of goods and services that it covers. In essence, the goods and services identify what the trade mark is protected for.

Goods and services are broken down into specific classes in accordance with the Nice Classification, which describes in very broad terms the nature of the goods or services. There are 45 class headings in total; goods (tangible products) fall within Classes 1-34 and services (intangible products) fall within Classes 35-45. Each class is defined by a specific list of products or services. Clothing, for example, falls within Class 25 and restaurant services are in Class 43.

One of the roles of a trade mark attorney is to carefully craft a specification of goods and services that will enable a business to achieve adequate protection for its brand. This is never as easy it may seem, not least because there are different rules in different territories which dictate how broadly goods and services can be covered under a new trade mark application.

A trade mark attorney will take time to understand the business relating to the brand in question and devise a list of specification terms that will protect a mark for all the relevant products and services. Often the specifications will be slightly broader than necessary in order to “ringfence” the essential goods and services and therefore deter competitors from getting too close to the business’s brand. When composing a specification for a new trade mark application it is also vital to consider the business’s aspirations for the future and to take into account how the brand may expand and evolve over time. Without careful consideration at the outset this can lead to unnecessary expense later on because once a trade mark application is on file its scope cannot be increased. Protection for additional products and services would mean that a second trade mark application would need to be filed, duplicating the costs.

Let’s suppose a business produces clothing under a particular brand name and obtains a trade mark registration for it. Then, in the following year, the business begins producing leather bags under the same trade mark. In that scenario it would be necessary to obtain another trade mark registration for the same mark in relation to bags. These products cannot be added to an existing registration which covers only clothing. Had the product expansion been anticipated to begin with then bags and clothing could have been included under the original registration. Not only would this have been cheaper, it would have deterred a competitor at a much earlier date from producing their own range of bags with an identical or similar brand to the business’s.