You have a product/service and have thought up a mark for it. You have checked if that mark is free. The next step is to classify it to the class of goods or services that your product/service belongs to.
Marks are registered for certain goods and/or services that you intend to designate by your mark and to offer them to consumers.
Goods and services are classified and grouped in 45 classes according to the international classification of goods and services for registration of marks – the so-called Nice Classification.
The Nice Classification is an international classification and as such it is applied by all national offices for registration of national marks, including the European Union Intellectual Property Office for registration of EU marks and the World Intellectual Property Organization for international registration of national and EU marks.
Goods are classified in 34 classes – 1 through 34, and services in 11 classes – 35 through 45.
Each class consists of a title (the so-called Class Heading) and a detailed alphabetical index with a list of goods or services included in the respective class.
The first thing that must be emphasized is that the Heading is interpreted literally (i.e. in a strict sense) and does not cover all goods or services of the alphabetical index attached thereto according to the EU legislation for registration of EU marks. According to the Bulgarian law, it is still possible to indicate the Heading of the respective class in the registration of a Bulgarian mark and to state that the mark is reserved for all goods or services of the relevant class. However, I recommend you, when making a mark registration, you refrain from that and enlist comprehensively and in details all goods or services of the respective class that you show interest in and intend to offer, in order to avoid any future specifications of goods which are not included in the literal interpretation of the Heading as it happened two years ago with the owners of EU marks. They were obliged to specify the goods and services which are not included in the literal interpretation of the Heading of the respective class indicated by them in the registration of their EU mark. You can read more about this in my article Trade Marks in the EU: most recent developments.
Pay attention that after applying for registration of a mark you will not be able to add any further goods and/or services to these that you have stated initially. That’s why I recommend you enlist comprehensively and in details all goods or services of the respective class that you are interested in.
Before making a mark registration, you should ask yourself what goods and/or services you actually intend to offer under this mark in the near 5 years. Once you get the answer of this question, we recommend you reserve this mark only for these goods and/or services (enlisted in details, as recommended above), which you intend to offer under this mark in the near 5 years, because most legislations, including the Bulgarian and the European legislation (for registration of marks in the EU) provide an opportunity for full or partial deletion of marks – if they have not been used for 5 years for all or for a part of the goods and/or services for which they have been registered.
For example, if more than 5 years ago you had registered your own mark for the manufacture of food supplements (class 5), shoes and coats (class 25), pastries and confectionery (class 30), and fruit juice (class 32), but you used it only for the manufacture of shoes, everybody could request its deletion in the classes for which it was actually not used – classes 5, 30, 32, and in class 25 – partially, for coats.
You should know that most offices, including the Patent Office of the Republic of Bulgaria, have included in their basic mark registration fees the registration in up to 3 classes only. Every next class is charged extra which is added to the basic mark registration fee. And some offices, such as the EU Intellectual Property Office, are much more restrictive and have included in their basic registration fee for the registration of the mark in one class only, and every next class is charged extra, which fee is increased proportionally. For example, for the registration of an EU mark in the second class you should pay EUR 50 extra, and for the third class – EUR 150. This policy of the offices dealing with mark registration aims at “disciplining” applicants and encouraging them to register their mark only for goods and/or services for which they actually intend to use it in order to free and clean the market, which is otherwise overpopulated with marks not used in fact.
Please note that this article is current as of 10.05.2018 and each case is strictly individual. This article is for information purposes only and does not constitute specific legal advice. Therefore, before you take specific action, and if we have not been able to answer all your questions, we recommend that you contact us and we will be happy to assist you. Every first consultation with us is completely free!