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
- What are the different trade mark classes of goods and services?
- How many trade mark classes are there?
- List of trade mark classes
- Can I apply for a trade mark if my product or service does not appear on the list?
- How to select the correct trade mark classification
- What happens if you pick the wrong trade mark classification?
- Getting it right first time
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.
|1||Chemicals||Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing and fire prevention compositions; tempering and soldering preparations; substances for tanning animal skins and hides; adhesives for use in industry; putties and other paste fillers; compost, manures, fertilizers; biological preparations for use in industry and science.|
|2||Paint Products||Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colourants, dyes; inks for printing, marking and engraving; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art.|
|3||Cosmetics & Cleaning||Non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery, essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations.|
|4||Fuel & Lubricants||Industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting.|
|5||Pharmaceuticals||Pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for human beings and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.|
|6||Metals||Common metals and their alloys, ores; metal materials for building and construction; transportable buildings of metal; non-electric cables and wires of common metal; small items of metal hardware; metal containers for storage or transport; safes.|
|7||Machinery||Machines, machine tools, power-operated tools; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; agricultural implements, other than hand-operated hand tools; incubators for eggs; automatic vending machines.|
|8||Hand Tools||Hand tools and implements, hand-operated; cutlery; side arms, except firearms; razors.|
|9||Electrical, Computing & Scientific||Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; recorded and downloadable media, computer software, blank digital or analogue recording and storage media; mechanisms for coin-operated apparatus; cash registers, calculating devices; computers and computer peripheral devices; diving suits, divers' masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimming; fire-extinguishing apparatus.|
|10||Medical Instruments||Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistive devices adapted for the disabled; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles.|
|11||Environmental Control||Apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes.|
|12||Vehicles||Vehicles; apparatus for locomotion by land, air or water.|
|13||Firearms||Firearms; ammunition and projectiles; explosives; fireworks.|
|14||Jewellery||Precious metals and their alloys; jewellery, precious and semi-precious stones; horological and chronometric instruments.|
|15||Musical Instruments||Musical instruments; music stands and stands for musical instruments; conductors' batons.|
|16||Paper & Printed Goods||Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; drawing materials and materials for artists; paintbrushes; instructional and teaching materials; plastic sheets, films and bags for wrapping and packaging; printers' type, printing blocks.|
|17||Rubber||Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; plastics and resins in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, tubes and hoses, not of metal.|
|18||Leather (Not Clothing)||Leather and imitations of leather; animal skins and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leashes and clothing for animals.|
|19||Non-Metallic Building Materials||Materials, not of metal, for building and construction; rigid pipes, not of metal, for building; asphalt, pitch, tar and bitumen; transportable buildings, not of metal; monuments, not of metal.|
|20||Furniture||Furniture, mirrors, picture frames; containers, not of metal, for storage or transport; unworked or semi-worked bone, horn, whalebone or mother-of-pearl; shells; meerschaum; yellow amber.|
|21||Houseware & Glass||Household or kitchen utensils and containers; cookware and tableware, except forks, knives and spoons; combs and sponges; brushes, except paintbrushes; brush-making materials; articles for cleaning purposes; unworked or semi-worked glass, except building glass; glassware, porcelain and earthenware.|
|22||Ropes & Cords||Ropes and string; nets; tents and tarpaulins; awnings of textile or synthetic materials; sails; sacks for the transport and storage of materials in bulk; padding, cushioning and stuffing materials, except of paper, cardboard, rubber or plastics; raw fibrous textile materials and substitutes therefor.|
|23||Thread & Yarn||Yarns and threads for textile use.|
|24||Textiles||Textiles and substitutes for textiles; household linen; curtains of textile or plastic.|
|25||Clothing & Footwear||Clothing, footwear, headwear.|
|26||Lace, Ribbon, & Embroidered Goods||Lace, braid and embroidery, and haberdashery ribbons and bows; buttons, hooks and eyes, pins and needles; artificial flowers; hair decorations; false hair.|
|27||Flooring||Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings, not of textile.|
|28||Toys & Sporting Goods||Games, toys and playthings; video game apparatus; gymnastic and sporting articles; decorations for Christmas trees.|
|29||Meat & Processed Food||Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk, cheese, butter, yoghurt and other milk products; oils and fats for food.|
|30||Staple Foods||Coffee, tea, cocoa and artificial coffee; rice, pasta and noodles; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; chocolate; ice cream, sorbets and other edible ices; sugar, honey, treacle; yeast, baking-powder; salt, seasonings, spices, preserved herbs; vinegar, sauces and other condiments; ice (frozen water).|
|31||Agricultural & Unprocessed Goods||Raw and unprocessed agricultural, aquacultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs; natural plants and flowers; bulbs, seedlings and seeds for planting; live animals; foodstuffs and beverages for animals; malt.|
|32||Light Beverages||Beers; non-alcoholic beverages; mineral and aerated waters; fruit beverages and fruit juices; syrups and other non-alcoholic preparations for making beverages.|
|33||Wines & Spirits||Alcoholic beverages, except beers; alcoholic preparations for making beverages.|
|34||Smokers’ Goods||Tobacco and tobacco substitutes; cigarettes and cigars; electronic cigarettes and oral vaporizers for smokers; smokers' articles; matches.|
|35||Advertising, Business & Retail||Advertising; business management; business administration; office functions.|
|36||Insurance & Financial||Insurance; financial affairs; monetary affairs; real estate affairs.|
|37||Construction & Repair||Building construction; repair; installation services.|
|39||Transportation & Storage||Transport; packaging and storage of goods; travel arrangement.|
|40||Treatment & Processing||Treatment of materials.|
|41||Education & Entertainment||Education; providing of training; entertainment; sporting and cultural activities.|
|42||Computer, Software & Scientific||Scientific and technological services and research and design relating thereto; industrial analysis and industrial research services; design and development of computer hardware and software.|
|43||Hospitality||Services for providing food and drink; temporary accommodation.|
|44||Medical, Beauty & Agricultural||Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.|
|45||Legal, Personal & Social||Legal services; security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals.|
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.