How Trademark Classes Build a Competitive Moat for Your Business (Trademark Registration Explained)

Why Trademark Classes Matter More Than You Think in Trademark Registration

“I thought I already registered my brand in Class 35?! How can others still register or use the same name for something else?!”

Most people think registering a trademark is just “choosing a name”. Realistically, this is not the case. Trademark is more than just a name or logo, and if done right, a trademark can be one of the best defence strategies for your business.

The number one mistake entrepreneurs make is focusing on the trademark but ignoring the classes. Classes determine what you actually own. Your moat is built on choosing the right classes.

Once you have chosen the right classes, the other thing that is often overlooked is the goods and services (specifications) registered under the selected classes. While trademark is generally protected by the class registered, the actual protection is according to the listed goods or services registered.

As we can see in Section 54(1) of the Malaysian Trademarks Act 2019,

“A person infringes a registered trademark if he uses a sign which is identical with the trademark in relation to goods or services which are identical with those for which it is registered, in the course of trade, without the consent of the registered proprietor.”

For example, when you register your trademark in Class 9, does it mean the entire class is registered?

The short answer is no. What really matters is what goods or services are included in the trademark registration. It does not automatically include everything in that class as the list of goods or services in each class are non-exhaustive.

Remember: Your mark is your castle. Trademark classes are the walls and moat that surround it.

What Are Trademark Classes in Trademark Registration?

This is a prescribed trademark classification system known as the Nice Classification. It is established by Nice Agreement in 1957, which is an international classification of goods and services applied for registration of trademarks. Conventionally, a new edition will be published every 5 years.

Most of the countries, including Malaysia, adopted Nice Classification for the purposes of trademark registration.

As mentioned in Section 19 of the TMA:

Classification of goods or services

19. (1) Goods or services shall be classified for the purposes of the registration of trademarks in accordance with a system of classification as prescribed.

In simpler terms, classes are categories of goods/services your business wants legal protection over.

How Many Trademark Classes Are There for Trademark Registration?

In total, there are 45 classes. Classes 1 to 34 protects goods and products whereas Classes 35 to 45 covers services provided under the trademark.

The headings listed above provide only a general indication of each trademark class. In practice, these headings are for reference purposes only. The scope of protection in trademark registration is determined by the specific goods or services listed in the application, which are far more detailed and non-exhaustive than the class headings themselves.

Think of trademark classes like the menu of what you legally own. If it is not on the menu, you cannot claim it.

Why Trademark Classes Build a Competitive Moat for Your Business?

Imagine your business brand as a castle. To protect it, you must build walls around the castle. These walls are the trademark classes that are relevant to your business. Whereas a moat around the castle walls is like the goods or services that you are marking your territory over.

They mark exactly where your protection applies. If you do not build the moat in a certain area, that area remains open. In other words, your protection only extends as far as you choose to build it.

Trademark classes can work as a defence system for businesses in the sense that:

1. They define the scope of the business’ monopoly.

2. They prevent competitors from using similar names in your industry.

3. They protect your expansion plans (e.g., merchandise, new product lines, franchising).

4. They affect valuation (investors check class coverage for brand defensibility).

5. They reduce the cost/difficulty of future legal disputes.

When You Register a Trademark, Does It Mean Nobody Can Use It at All?

The Short Answer: No, other people may still register or use the same trademark for different goods or services.

For example, if you register for ice cream in Class 30, can someone use it for something else?

Let’s take a look at the brand “Magnum” for example. Which brand comes to mind first: the ice cream, the lottery or something else?

Did you notice there are other businesses that use “Magnum” as part of their brand? This is where the trademark classes come into play.

Magnum, the ice cream brand, is protected in over 40 countries with their main registered class being Class 30, which covers mainly chocolate and coffee-based products, confectionery and frozen products. They have also registered their brand in other classes relevant to their business in selected countries. Those classes are:

1. Class 29 – covers fruit, yogurt and milk-based products

2. Class 32 – covers non-alcoholic beverages

3. Class 43 – covers café and restaurant services.

These classes are very relevant to Magnum Ice Cream as they have established cafes in several countries. Now, no other businesses are able to open a café with the name “Magnum” or produce desserts with the “Magnum” name slapped across the packaging.

In relation to the local Malaysian Magnum 4D lottery brand, which is registered in Class 41 in Malaysia, they are able to co-exist with the Magnum Ice Cream brand as they do not seem to be in the same industry as the ice cream brand. Magnum ice cream is only able to attack if Magnum 4D one day opens a café, which falls under Class 43, which Magnum Ice Cream already registered.

In simple terms, registering only one class is like putting up only the front wall of the castle, leaving the top, bottom, sides and the rear undefended.

The 4 Common Mistakes Entrepreneurs Make with Trademark Classes

While it is important to get the widest scope of protection for your business, it is also important to avoid common mistakes when it comes to trademark classes. Here are the 4 common mistakes that entrepreneurs make with trademark classes.

1) Choosing the wrong trademark class.

Many entrepreneurs think “as long as I register something, I’m protected.” But trademark registration protect the “trademark + specific goods or services”, not the trademark alone.

A common mistake for example is where a cosmetics brand registers Class 35 (retail services) instead of Class 3 (cosmetics). The certificate looks official, but it does not protect the products they actually sell.

If a competitor later registers a similar name in Class 3, the competitor becomes the lawful owner for cosmetic products. Without the correct class, the owner cannot sue for infringement by relying on his Class 3 trademark registration.

2) Registering too few classes and leaving expansion areas exposed.

Imagine you have conquered the major cities within your territory, but you forgot to station some troops at the outskirts of your territory. Others may have already conquered the outskirts without you knowing and when you realised that it is actually within your territory, you would have been one step too late.

This is exactly what registering in too few classes feel like. When it is time to expand, you find that someone else has already registered the same name or similar name in the class you want to expand your business into.

3) Copying competitor classes blindly without matching their business model.

Many entrepreneurs assume that if they copy a competitor’s trademark classes, they will get complete protection too. However, every business operates differently and trademark classes must reflect your own products, services, and future plans, not someone else’s strategy.

For example, a competitor may register in Class 35 because they run large retail operations. But if you manufacture your own products, you may need Class 3, 5, or 30 instead. Copying their classes means you might miss the classes that actually protect your goods or services.

This leads to two problems:

• Over-filing in classes you do not need (cost issue).

• Under-protecting the classes you do need, leaving gaps your competitors can exploit.

4) Thinking Class 35 covers everything.

It is true that Class 35 offers relatively broad protection, which is why it is often misunderstood. Many business owners assume that registering under Class 35 automatically protects their products, and as a result, they overlook other critical trademark classes.

In trademark registration, Class 35 mainly covers services such as business management, retail and wholesale services, organisation and administration of a commercial enterprise, as well as advertising, marketing, and promotional activities.

For example, registering retail services for cosmetic products in Class 35 simply means that you are protected for selling or trading products under your brand, including products manufactured by others. This is how businesses like Watsons or Tesco operate — they provide retail services by selling goods produced under different brands.

However, if you want to protect your own cosmetic products, Class 35 alone is not sufficient. You must still register your trademark separately under Class 3, which covers cosmetic and personal care products.

How to Choose the Right Classes for Trademark Registration?

It is very important that you choose the right trademark classes for your business. Here are 4 easy steps you can follow:

Step 1: Identify Your Core Product/Service

• Ask yourself: What do you actually sell today?

• This helps to build the basic foundation for your trademark registration.

Step 2: Identify Your Future Products

• Ask yourself: What do I plan to add on in the next 2-3 years?

• For example: Merchandise, accessories, future product lines – will there ever be a possibility that you may produce these goods or slap your brand name across items like these?

• Will there be a possibility of expansion of business into cafés, software, courses, distribution, etc?

• This helps determine which trademark classes are relevant to your business.

Step 3: Protect Operation-Linked Activities

• Ask yourself: does your business do retail/online selling, distribution/transport or manufacturing? If yes, then Classes 35, 39 and 40 may be considered when registering your trademark as well.

Step 4: Consider Defensive Trademark Classes

• Ask yourself: Are there any products or services you are not offering yet, but which are so closely related to your business that you would not want a competitor to enter?

• Defensive classes are strategic registrations in related or adjacent markets/classes.

• This can stop competitors from launching similar products under your brand name.

How a Proper Trademark Class Strategy Builds a Long-Term Competitive Moat

Once you have chosen the right combination of core and defensive classes, you are no longer just “registering a trademark.”

You are building a brand fortress, a moat that protects your growth for years to come.

Here is what that moat does for your business in the long run:

Safeguards diversification

A strong class strategy ensures that when you expand, whether into new product lines, new services, or new markets, your brand name is already secured. You are not forced to rebrand or fight off competitors who rushed to register in the new class before you did.

Strengthens investor confidence

Investors hate uncertainty, especially around intellectual property.

When they see that your trademark covers all relevant classes (not just one), they know your brand is legally protected and scalable. This reduces risk and makes your business more investable.

Allows franchising/licensing with clean IP

Successful franchising and licensing deals rely heavily on clear, uncontested IP ownership. If your trademark only covers part of your business model, franchisees or partners may be exposed.

A complete class strategy ensures every revenue stream you license is fully protected.

Increases brand valuation

Brands with broad, strategic trademark coverage are valued higher, both in audits and during due diligence. Each class you secure becomes an intangible asset that contributes to your overall brand equity.

Prevents brand dilution

Competitors love entering gaps you leave behind.

A proper class strategy blocks them from registering or using confusingly similar names in adjacent markets, protecting the distinctiveness of your brand over time.

Practical Checklist for Business Owners

Before you proceed with that trademark application, it is good practice to ask yourself the following questions:

✔ What do I sell today?

✔ What will I sell in 1–3 years?

✔ Do I need Class 35?

✔ Do I need to protect manufacturing or distribution?

✔ Are there defensive classes I should cover?

✔ Has a competitor locked certain classes already?

✔ Has my lawyer checked for conflicting marks?

This could prevent future losses to your business and may strengthen your business’ defense for a long time.

Many businesses lose their trademark rights not because they failed to register — but because they registered the wrong classes.

If you want to build a strong, defensible trademark portfolio through proper trademark registration, speak to us. We help businesses secure the right trademark classes before competitors do.

Written by,

Low Vee Vien

IP Associate

LL.B (HONS)

Lawrence Tan 

Registered Trademark, Patent and Design Agent

LL.B (HONS), CLP

Advocate & Solicitor

Disclaimer: This article is for general information only and does not constitute legal advice. For advice on your specific situation, please consult a qualified Intellectual Property Professional