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Choose The Best Trademark Classification in 5 Steps

“Class? What Class? Isn’t it I just need to have a trademark for registration?”


Not only that. After deciding which trademark to register, the next big thing to do is to identify the Classes you wish to register your trademark in. This is important because it determine how strong is the protection on your trademark.



What is a Trademark Classification?


At this point, you are probably wondering what is a Class? It is a classification system that the Government Trademark Office used to classify the goods and services being sold under the trademark. Different types of goods and services are categorised into different Classes for the purposes of trademark registration. That being said, the more Classes a trademark registered, the wider is the protection.


For better understanding, let’s take the Food & Beverage (F&B) industry as an example. A café operator should at least register its trademark at Class 43 (for café and dining services), and Class 35 (for retailing and business services).

However, if we look into how Starbucks Corporation (“Starbucks”) registered its "Starbucks Coffee & Mermaid device" trademark in Malaysia, we can see that it has covered the trademark extensively by registering it in 17 Classes as below:

Trademark

TM No.

Class

Goods/ Services



2017006844

5

medicinal herbal tea; vitamin drinks

97015699

7

electric coffee grinders

97015700

9

musical sound recordings

97015683

11

electric coffee makers and brewers

02012496

14

jewellery; watches and wristwatches; kitchen timers

97015682

16

paper coffee filters; magazines, newspapers and publications

97015689

18

wallets, billfolds, bags, purses, portfolios and umbrellas

97015681

21

hand operated coffee grinders and coffee mills; coffee filters, non-paper coasters, bottles, cups and mugs, glassware, dishes, plates and bowls, trivets, storage canisters, coffee makers

97015680

25

clothing namely t-shirts, polo shirts, sweatshirts, caps, hats, jackets, shorts and aprons

02012497

28

toys, namely, stuffed toys, doll and accessories therefor, christmas ornaments

00006590

29

syrups and mixes used to make milk-based food beverages; dairy-based food beverages; cream; coffee creamer

95001590

30

coffee, tea and cocoa beverages; flavoring syrups; baked goods and breads, sandwiches; chocolate, candy and confections

97015687

32

bottled waters, sparkling wafers, mineral waters, fruit juices, sparkling fruit and juice-based beverages and soda beverages

97018802

35

business management and development services for operation and franchising of restaurants; designing of restaurants

03004420

36

financial services, namely, debit, credit and stored value card services

06015360

38

telecommunications; user access to a global computer network; operating of search engines; data broadcasting services

02012498

43

cafes, coffee houses, coffee supply services, restaurant and snack bars

At the core of its business, it would be crucial for Starbucks to register its trademark in Class 30, 32, 35 and 43. Nevertheless, in addition to the said four Classes, Starbucks also expanded the trademark classifications to cover other goods and services that it trades. Currently, the protection of Starbucks’ trademark is remarkably broad for its business.



HOW TO CHOOSE THE CLASSFICATION FOR YOUR TRADEMARK?

HERE’S FIVE SIMPLE STEPS!


Generally, there are only a hand full of Classification which could be relevant to a business, particularly small and medium enterprises (SMEs).


In deciding which Class to apply, you may want to consider adopting the following steps:-


1. First, list down the primary goods and services being sold under the trademark.


2. Secondly, list down the goods / services related to your business but you may not be selling in the near term. We can call these secondary goods and services.


3. Identify the Classes for each of the goods and services under the trademark. This may be slightly technical and you may wish to ask for help from your trusted Trademark Agent (Eh…hemmm!).


4. Sort the Classes according to priority that you wish to protect the most, then start registering your trademark from the most important ones. You may decide the number of classes based on the budget that you have allocated. We strongly advise covering all the primary goods and services first.


5. For those classes that you are not registering now, do so as soon as you are ready. Don’t leave them hanging for too long!



CONCLUSION


We do have to accept the reality that the more classes you register for your trademark, the higher the cost. But the good news is, you don’t need to register your trademark in all the Classes at one go! You may register your trademark in the Classes for your primary goods and services first and later add the other Class when you are ready (either financially ready or they are becoming more and more important to you).


All in all, the decision will ultimately depend on your business model and your vision for your business. For more information, feel free to contact us! We would be more than happy to help you!





Written by,


Master of Laws LL.M (Hons)

Advocate & Solicitor of Malaya (Non-practising)


Registered Trademark, Patent and Design Agent

LL.B (HONS), CLP

Advocate & Solicitor (Non-Practising)





Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from professionals.






© 2023 by IP Gennesis Sdn Bhd.


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