Many have misunderstood that registration of trademark is just as simple as submitting a form and clipping the trademark. The fact is in trademark registration, there are many issues to look into other than the trademark itself.
Once you have decided the trademark to be registered, the next important issue is to list down the goods or services covered under the trademark and determine the relevant classifications. For trademark registration in Malaysia, we adopt the Nice Classification.
WHAT IS NICE CLASSIFICATION?
Nice classification is also known as International Classification of Goods and Services, established by Nice Agreement. It is a system of classifying the goods and services in commerce for the purpose of trademark registration. The Nice Agreement was consummated on 15 June 1957 in Nice, France. As on 15 January 2020, there are 88 member states signed up the Nice Agreement. Malaysia became the party of Nice Agreement on 29 September 2007.
There are 45 classes in the Nice Classification, where Classes no. 1 to 34 include goods and Classes no. 35 to 45 cover services. Please feel free to download the brief headings of the Nice Classification here.
It should be pointed out that the Nice Classification is not arranged according to business sector or industry, but rather according to the natures and characteristics of the goods and services.
For example, if an entrepreneur, Angel, is in the fashion industry, there are at least 3 classes that could be relevant for trademark registration:-
Class 18 for leather bags
Class 25 for clothing, footwear and headgear
Class 42 for fashion design
GOODS AND SERVICES DETERMINE THE SCOPE OF PROTECTION
Identifying the classes alone is not sufficient, Angel has to list down the goods and services that are covered under the said classes. This is a crucial step because the trademark will be protected according to the goods and services listed in the applications. If someone uses the trademark on the goods or services which are not listed in the trademark application, he might be able to get away from the liability of trademark infringement. However, this scenario should be examined on a case to case basis, which we will discuss in another article.
The bottom line is, list down the list of goods and services in detail and include them into the trademark application. If any doubt, it is advisable to consult a competent Trademark Agent or Trademark Attorney to ensure that the correct classes have been identified and the specification of goods and services are worded accurately.
SPECIFICATION OF GOODS AND SERVICES SHOULD BE CUSTOM-MADE
There is a misconception that when come to legal issues, we can always “adopt” from other template clauses or terms. However, it is very dangerous to simply adopt the entire paragraph of specification of goods and services from other trademark registrations. We may unknowingly include something we don’t need or omitted some goods and services which are the core of our business.
Therefore, the specification of goods or services of a trademark registration should always be custom-made for each company.
MULTIPLE CLASS APPLICATIONS
Once the list is confirmed, then we may proceed with identifying the relevant classes. For trademark registration in most of the countries, the registration cost would increase according to the number of classes chosen or number of items of goods or services.
In the circumstances, if the budget permits, we would recommend cover as many classes and goods or services, as possible. In the event of budget constraint, choose the classes and goods or services according to the priority.
Please feel free to contact us if you need our help to draft a specification of goods and services which is unique to your business!
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 the professionals.
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