One of the important conditions for the successful development and protection of a business, its competitiveness in the market is the availability of legal protection for its intellectual property, which requires close interaction between business representatives and patent attorneys.
One of the key points is legal protection
trademarks
for goods produced by the company or services provided by it. An important condition for a positive decision by Rospatent to issue a certificate of registration of a mark is a correctly compiled list of goods and services in respect of which their legal protection will be carried out, and an indication of the classes of the IKGS (International Classification of Goods and Services for the Registration of Marks, developed by the World Intellectual Property Organization - WIPO), in respect of which the marks are registered. In total, the classifier identifies 34 classes for goods and 11 classes for services (each class lists the goods and services related to it, the number of which is about 9,000 units). The FIPS website contains a list of all goods and services in Russian, English and French.
Indication of ICGS classes
for designation is necessary because Rospatent experts must understand whether trademarks will mislead the consumer or not.
In the first 34 classes, goods are classified generally according to their function and purpose, for example:
- unprocessed or partially processed raw materials are classified, as a rule, by material;
- in the event that finished products or semi-finished products are classified according to a material consisting of many components, then they are classified according to the predominant material in them;
- containers used for packaging or storing goods are classified in the same class as the goods themselves.
Services are classified according to the area of activity:
- rental services - in accordance with the services provided through rental facilities;
- services related to scientific research and education (for example, education, education and entertainment - 41st grade, scientific development - 42nd grade, etc.);
- Franchising services are classified in the same class as services provided by the franchisor (eg classes 35, 36, 45).
That is, in each class there is a list of goods or services taking into account their characteristics - the ICGS class determines in what type of activity the copyright holder works, and what goods or services will be protected by the trademark. Moreover, if the same trademark belongs to different classes of the ICGS and the goods are heterogeneous, then it can be registered for different owners.
However, it should be remembered that if the copyright holder wants to register a mark for a large number of classes of the ICLG, but is not used for most of them, then there is a risk of its cancellation. A big disadvantage is also the fact that the copyright holder must pay a fee for each ICLG class used, which means that the more classes, the higher the fee.
Conversely, the fewer goods and classes are indicated in the application, the faster the examination takes place and the simpler the registration, and the copyright holder receives a certificate in a short time.
The desire of the copyright holder to register as many ICGS classes as possible for the same trademark indicates his desire to develop his business. In this case, it is important to take into account the factor of homogeneity of goods and/or services.
According to the law, homogeneous goods/services are understood in relation to which the consumer (provided the names of the goods are similar) may, for example, have the idea that they belong to the same manufacturer.
For example, a company is engaged in the production and sale of fabrics for sewing workwear for employees of various specialties, including firefighters, and the manufacturer chooses class 24 of the ICGS “textiles” for registration of technical specifications, but is refused because it is opposed to the technical specifications for class 40 of the ICGS (processing of materials). Class 40 is a service class and includes the item “fire-retardant treatment of fabrics.” The goods “textiles” and the service “processing of fabrics to impart fire resistance” are homogeneous to each other, and in the case of identical or similar names/images, the consumer may consider that the production of fabric “textiles” and the provision of services “processing of fabrics to impart fire resistance” are carried out by the same legal entity or related persons. In the described situation, there is a risk of misleading the consumer, which means that trademark registration will most likely be refused.
Summarizing the above, I would like to note that when filing an application for registration of a trademark, it is very important to correctly select the ICL class for it, taking into account the development of new directions in the short term, including in its list the release of all intended goods and the provision of relevant services. Only with this approach to legal protection will a trademark remain an effective tool in competition.
