EUIPO: Relevance of Trade Mark Classes

Martin Riemscher has been working at the EUIPO in Alicante for many years and perfectly understands the administrative proceedings at the Office.

Basic insights

The Relevance of Trade Mark Classes

The importance of the choice of the classes can not be underestimated. Classes in itself have no direct legal implication. Classes serve for administrative purposes in the first place. They are based on the Nizza classification (Nice). The relevance of classes is a following:

A trade mark registered in a class is being considered used in this class. If a new applicant is choosing the same class, one of two preconditions for relative grounds of refusal is met: The goods and services are considered identical.

Classes, on the other hand, must be actively used. Blocking a class but not using it is a bad idea. The opponent may request proof of use and if the other party fails to proof this usage, the trade mark is not deemed protected in this class. The opponent may even request for cancellation of the whole mark or in the respective classes.

If one registers in another class but the goods or services of a new applicant are still close enough, one might object this new application. It is not easy to monitor this, as one needs to expand monitoring to many additional classes to capture the fully flow of new applications.

For details of the NICE classes see the WIPO website.