Trade mark classification: how to classify trade marks

When it comes to registering a trade mark you’ll need to make sure you know how to navigate the trade mark classification list and how it applies to you. It may seem simple, but it’s important to make sure you choose the correct trade mark class as part of your application because once it’s filed, you will not be able to change any of the pre-approved terms within each of the classes available.

For legal advice on trade mark classification and the registration process, get in touch with our team of expert trade mark solicitors.

Read more to learn about a key part of the trade mark registration application process that business owners often find particularly challenging – trade mark classification.

Introduction to trade mark classification

When applying to register a trade mark, applicants are required to provide a statement setting out the goods or services for which protection is required. Intellectual Property Offices all over the world use a trade mark classification system known as the Nice Classification. This system groups together similar types of goods or services into categories or ‘classes’. Each class has its own ‘class heading’ – a high-level and very general statement of what is in the class – and a more specific list of what is and what is not included, in an explanatory note. National and regional trade mark registries have their own pre-approved terms which draw on these lists, but which also contain items that are peculiar to the country concerned.

In order to register the trade mark, the applicant must select the class or classes relevant to the goods or services they are supplying, as well as some relevant specific terms which may or may not be pre-approved ones. If you can stick to pre-approved terms, your application may proceed much more quickly.

Goods and services can be specified at different levels of generality, and the law requires that you use, or intend to use, the trade mark on the goods or services in your specification. ‘Clothing, footwear and headwear’ (class 25) covers an enormous range of goods. You may consider it ideal to get the monopoly provided by trade mark law over that whole category of goods. But you are far more likely to face challenge at the application stage from third parties (or, in some countries, from the examiners). You may also find that after five years you are required to ‘prove use’ in the context of a dispute and the decision-maker then rewrites your specification for you. So there is a real tactical aspect to the decision of whether to ‘go broad’ or be more specific in your specification. Nothing is more frustrating than having launch plans held up because you have a broad specification covering, say ‘paper’ because you have paper-based marketing materials, only to have some business in an entirely unrelated industry object because they have done the same thing in relation to an earlier registration. Classes 9 (software and all machines), 16 (paper, pamphlets) and 35 (retail services) tend to be particularly busy in this regard and we see many businesses drawn into disputes that bear no relevance to their roadmap.

What are the different trade mark classes of goods and services?

Each class has a broad ‘class heading’ which describes the nature of the goods or services contained in that class. However, the heading is not intended to be an exclusive list of goods or services covered by that class. It is provided as a general description only, and the case law has demonstrated that there are goods or services not mentioned in the class heading but included in the class. Explanatory notes are also provided which explain which goods or services fall under the class headings and which goods or services do not, but again that does not answer every possible question about how goods and services must be classified.

How many trade mark classes are there?

There is a total of 45 trade mark classes in the UK. The classes cover a broad range of goods and services from cosmetics, medical instruments to toys and sporting goods. Below is a list of all of the trade mark classes.

List of trade mark classes

The table below sets out the different trade mark classes and general descriptions. Goods are listed in classes 1 – 34 and services are listed in classes 35 – 45.

Please check the World Intellectual Property Organisation (WIPO) website for a maintained list which includes the explanatory notes.

Can I apply for a trade mark if my product or service does not appear on the list?

The idea of the Nice classification is that everything – all goods and all services – are in there somewhere. New technologies are always coming along, though, and fashions are changing, so the classification cannot be set in stone. It is revised periodically, and the latest version came into force at the start of 2023. Even so, it is likely that people will want to register trade marks for goods or services that aren’t mentioned specifically. At some time during the 1980s, for example, it became necessary to register trade marks for CDs: they fit neatly into class 9, and while they are now specifically mentioned in the explanatory note, the fact that they were not always included there did not mean a trade mark could not be registered for them.

Previously, the conventional wisdom had been that the goods sold by the retailers could have trade mark protection but that retailers were not providing a service, they were selling trade-marked goods. Bowing to the inevitable, the Registry eventually started to accept specifications that included retail services provided they used a rather specific form of words: now, ‘retail services in relation to …’ specified goods will usually be acceptable.

In 2023, the topical issue is non-fungible tokens or NFTs. The Oxford English Dictionary defines these as ‘a unit of data that certifies a digital asset (e.g. a piece of digital art) as unique and provides proof of ownership, which is stored using blockchain technology and traded online using cryptocurrency’, which suggests that they should no more merit trade mark protection than the registration document for a motor car. It’s the underlying asset that matters from a trade mark perspective, and the UK Trade Mark Registry recently stated that it will not accept ‘NFT’ as a classification term on its own. It will, however, accept ‘digital art authenticated by non-fungible tokens’ and similar forms of words, in line with the explanatory note (not the class heading) to class 9 in the Nice Classification which gives approval to ‘Downloadable digital files authenticated by non-fungible tokens [NFTs]’. Retail services and the provision of online marketplaces for goods authenticated by NFTs will also be acceptable.

How to select the correct trade mark classification

The specification should set out details of the goods or services that the company is currently providing but should also seek to cover those that the business anticipates it may expand into in the future. A registered trade mark lasts 10 years, so consider the different classes in the context of how you may wish to grow your brand over time.

There may be a temptation to submit a broad specification in order to try and cover all bases; however, caution should be exercised here – if the specification is too broad and includes goods or services that the applicant does not really intend to market, the trade mark may be vulnerable to challenge at a later date on the grounds of non-use – or could even be considered to have been filed in bad faith. Applicants for UK (but not EU) trade marks are required to confirm that the trade mark is currently in use in relation to the relevant goods or services or that they intend to use the trade mark in such a way.

When you’re assessing which class your goods or services belong to, consider the following:

• the function and purpose of the goods
• whether the goods consist of any raw materials
• what activities are involved in the service
• the class to which the subject matter of the advice corresponds when information services are being considered.
• are you really providing the service to a customer? Or is this simply an internal function of the company like advertising or provision of third party software?

The last few decades have seen enormous growth in the breadth, and length, of specifications.

Trade mark owners often try to cover all the ancillary goods and services they deal in. Football clubs have an interest in clothing, for example, and fashion retailers might use television advertising not only over the air but also in their shops. Does that justify a trade mark registration for television programmes or broadcasts, in addition to clothing, footwear and headwear (class 25), jewellery (class 14) and cosmetics (class 3)? Perhaps to the company’s shareholders the answer is ‘yes’, but to a broadcaster with a similar name that looks like an unwarranted restriction on their commercial speech. TMclass is a search tool - a useful resource that can assist you with searching for, and classifying, the goods and/or services terms needed to apply for trade mark registration.

Other support is also available, but we generally say that unless the registration is for a highly specific category of goods (‘pianos’) you will get value added by consulting a trade mark solicitor specialising in intellectual property

What happens if you pick the wrong trade mark classification?

Once a trade mark registration application has been filed, additional classes, and goods or services not already included in a more general expression, cannot be added (although a new application could be filed). So, it is important to choose the right class or classes for your goods and or services at the outset. The Examiner will often report that certain goods or services are proper to a different class from that in your specification, and that can readily be corrected (it does not affect the scope of protection sought by the applicant). If, however you choose the wrong classification for your trade mark, you could find yourself having to make a new application.

Getting it right first time

Drawing up the specification for a trade mark application is much more than just a matter of listing the goods or services in which you are interested. To maximise your protection and the return on your investment in your brand, and to future-proof your trade mark, requires a careful blend of the general and the specific. An experienced trade mark solicitor can save you a great deal of trouble by ensuring that you get it right at the outset.

About our expert

Lindsay Gledhill

Intellectual Property Partner

Lindsay Gledhill is an Intellectual Property Partner at Harper James. She has specialised in intellectual property exploitation and dispute resolution since 1997. She trained and qualified in Cambridge’s top intellectual property firm during the 'dot com boom', then spent four years at top 50 firm, Walker Morris.

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