TBA Global

Trademark – Part 2.

      4. Trademark classes

The WIPO has defined several classes for trademarks, to indicate individual types of goods/services.  This is known as the Nice Classification for Trademark Registration (NCL)[1]. Most jurisdictions will use a variation of the NCL class system.

For example, a trademark associated with clothing/footwear falls under Class 25.

More information on the individual classifications can be found here:

https://www.wipo.int/classifications/nice/en

It is usually possible to register a trademark with multiple classes, if applicable.  However, registering with multiple classes will usually result in more scrutiny by the trademark body assessing the application.  

 

       5. What types of trademarks are available?

At TBA Global, we can help your business register for the following types of trademarks:

  • Word/slogan

These apply regardless of design (e.g. font, size, colour).  Word/slogan trademarks offer very strong protection compared to some other types (e.g. logos).  However, the word/slogan must be specific, and would usually only be in a single language. 

  • Images

Images are distinct from logos – they may be simpler in comparison, and therefore useful for multiple applications besides representing the overall brand.  However, it may be difficult to trademark if the image is not a detailed design with a specific description.   It may also be more difficult to prove infringement by other businesses.

  • Logos

Logos form a prominent part of a business, and help maintain a consistent brand image in the long-term.  As is the case for images, a detailed design and specific description is required, and the logo must be used in the exact same form in all use cases.

 

     6. Restrictions on trademark registrations

Depending on the type of trademark, certain restrictions may apply.

For example, a word/slogan trademark cannot include any of the following:

  • Vague descriptions/adjectives
  • Geographical place names
  • Most surnames, unless the surname is distinct and is extensively used in the market
  • Generic terms
  • Deceptive/misleading remarks
  • Any similar words/phrasing to existing trademarks

A logo/image trademark cannot include any of the following:

  • Offensive imagery
  • Official government imagery
  • Generic images

[1] https://www.wipo.int/classifications/nice/en/

      7. How do I register for a trademark?

The application process will differ depending on whether you are applying as a sole trader, or a corporation/company.  

Corporation/Company:

  • Corporation/company certificate
  • Director’s proof of identification (passport/national ID)
  • Contact details
  • The trademark content (e.g. word/phrase, or image in .jpg, plus RGB code)
  • Trademark class and type
  • Description of the business
  • Website URL (if applicable)

Sole Trader:

  • Proof of identification (passport/national ID)
  • Contact details
  • The trademark content (e.g. word/phrase, or image in .jpg, plus RGB code)
  • Trademark class and type
  • Description of the business
  • Website URL (if applicable)

 

       8. Registration process

TBA Global can facilitate your application for both the UK and EU markets.

An ‘opposition period’ applies to both application processes – this is where other interested parties can raise objections to your application. 

UK IPO applications:

 

EUIPO applications: 

 

 

        9. Need more information?

At TBA Global we offer a free one-to-one consultation that can help you to determine what your business needs.  Please get in touch with us at info@tbaeu.com

 

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