• Trademark and Patent

How to Choose the Right TM Class?

When you apply for trademark registration, one of the main issues is to determine for which goods and/or services you will use the trademark. Selection of the right class is vitally important since once the application is filed with the wrong or missing class, you cannot change it or add more classes to the existing application. The only solution to fix this mistake would be making another application with the right class which would bring extra cost.

Importance of Classification

Most of the Intellectual Property Offices all over the world -including Turkish Patent and Trademark Office- use a trademark classification system that groups similar goods or services into 45 different classes. 34 of these classes are intended for goods while the others are for services. All classes have broad headings explaining what is covered in that specific class. This categorization is called Nice Classification.

The purpose of this categorization is to limit the number of potential products and/or services that a single trademark is registered and used for. In this way, different businesses can use the same trademarks for different goods and/or services in diverse categories. For instance, if company A sells books and stationeries under its registered trademark X, company B can also register trademark X for the provision of its consultancy services. As long as it will not cause consumer confusion, several companies can register and use the same trademark for different goods and services. However, if the company B also decides to use and register trademark X for books and stationeries or any other related classes despite the registration of company A, then use and registration rights of this trademark would not be given to company B.

Picking Good or Service or Both

Before making a trademark application, one of the first steps is to decide whether you are producing and/or selling a good or service or both. This will help narrow down the field considerably, and then you can start picking the needed classes.

Look Beyond

We recommend you to broaden your focus on the goods and/or services further than what you use or intend to use your brand on currently. Once you register your trademark, it lasts for 10 years, and this right can be renewed forever each 10 years. Therefore, it would be better to consider future expansion of your trademark as including classes for future use into your current application could help you save time and money. Although each extra class brings additional cost in Turkey, it is far less costly than making a new trademark application for another class. Yet, the more classes you apply for, the more you pay, it also makes sense to apply only for classes which apply to your business.

For instance, a company files an application to register its brand for foods in class 30, and then decides to expand its trademark into beverages in class 32. Since the application it has filed only covers class 30, it has to file another trademark application in class 32. The company could have avoided the extra cost and time of making a new application by including both classes in the first application along with the future payment of two sets of renewal fees.

What is more, you should also keep in mind that a registered trademark can be revoked if it is not in use for consecutive five years. Five years after registration of your trademark, upon request of a third party, you may be required to demonstrate that your mark is used for the classes you selected during application. In this regard, it would be better to refrain from applying for unnecessary classification categories which will not be used in production and sales phases.

All in all, at first, it may sound logical to apply for registration with a wide list of all classes to have a broader protection, but unfortunately it is not that simple. Application or registration for class(es) that you do not intend to use will be waste of money as well as bringing the risk of losing those classes by revocation actions in the middle and long-run.

Consult a Trademark Attorney

To a first timer, determining the right class(es) can be challenging. Besides, despite adapting the same classification system, each country may have some differences in details. Therefore, the best way for the selection of your trademark class(es) in Turkey is to consult ETERNA Trademark Attorneys. Our staff is experienced and ready to help you for a smooth trademark registration process from beginning to end.

Don’t run the risk of incurring unnecessary expenses or leaving your trademark open to risk. For help and advice on all trademark registration process please contact: info@eternaip.com