“A wrongly classified trade mark can be misunderstood”

Peter Benninger has been a trade mark expert at the IPI for more than 25 years. He has represented the IPI on the Committee of Experts of the Nice Union for around 20 years and is therefore an expert on all matters relating to the classification of goods and services.

In all countries that offer trade mark protection, you need to specify the goods and/or services for which trade mark protection is to apply when you register a trade mark. The aim of the agreement adopted in Nice in 1957 is to ensure that goods and services are classified using the same criteria in all member states. This offers two advantages. Firstly, it makes it easier to extend trade mark protection to other countries in accordance with the Madrid Agreement – and fortunately most countries have now signed the agreement. Secondly, it makes it easier to carry out international searches for confusingly similar trade marks. You can search the trade mark databases directly only in those classes that could potentially lead to conflicts, as identical or similar trade marks for completely different goods and services are generally not a problem.

The Nice Classification divides all goods and services into 45 ‘LGS’ (list of goods and services) classes. There are 34 classes of goods and 11 classes of services. Each class contains class headings with generic terms. For example, Class 25 contains the generic terms ‘clothing, footwear, headwear’. The explanatory notes on this class, which can be accessed, for example, via the database of the World Intellectual Property Organization (WIPO), provide information on what this class includes. For example, ‘leg warmers’ and ‘hairdressing capes’ also belong in this class, but ‘clothing for animals’ and ‘electrically heated mittens’ do not. They would have to be classified in other classes.

This is a tactical question. It’s best to ask a trade mark consultant.

In general, however, a generic term such as ‘clothing’, offers broader protection than a specific term such as ‘tee-shirts’. This means a lot is covered directly and you run less risk of forgetting something. So if you offer or intend to offer all kinds of clothing, you should choose the generic term. If there are conflicts with other trade marks, you can describe the goods and services claimed more precisely or limit them at any time. Many disputes are resolved in this way.

If you have broader protection, however, you have a greater area open to attack: another party could offer something identical or similar in a sub-class. If you want to register a new trade mark for ‘clothing’, an owner of an earlier, similar trade mark claimed for underwear might file an opposition. However, if your trade mark is specifically only for t-shirts, they might not bother. There are also various countries, such as the United States, which don’t accept generic terms. This may play a role if you extend your protection to other countries.

It’s also important to know that each class also contains goods and services that can’t be assigned to the generic terms. The heading of Class 15, for example, is ‘Musical instruments; music stands and stands for musical instruments; conductors’ batons’. ‘Bow hair for stringed instruments’ or ‘bellows for musical instruments’, for example, would not be covered by the generic terms. If you want the bow hair to be protected too, you’d need to specify this explicitly in your trade mark application alongside the generic terms.

If you manufacture and sell goods, you need only specify the manufactured goods themselves in the corresponding class of goods. Everything else that is necessary to produce and distribute the specified goods is considered to be an auxiliary good or activity (not a service). In the case of a confectioner, for example, sweet wrappers, product packaging and the website advertising its sweets are auxiliary goods and activities. However, if the packaging is very closely associated with the goods, it may also make sense to protect the packaging.

The most common error is unclear wording. The cause is often a poorly translated original list, for example if you create a list in English and then translate it into German with an online tool for your trade mark application. Sometimes the cause is simply poor use of language. If the wording is unclear, we object to the application. The applicant can then amend the list of goods and services accordingly within two months.

One example is ‘Class 42, provision of a website (software)’. What is meant by provision? Is software provided on a website or is a specific service provided via a website using software? This wording is incomprehensible. Instead, applicants should simply state which services they offer (via the website), such as ‘online insurance advice’.

Applicants frequently attempt to be more precise by using ‘in particular’, for example ‘electric apparatus, in particular razors’. According to our practice, however, a term such as ‘electric apparatus’, which is too vague for classification, cannot be made more precise in this way. Even with this kind of non-exhaustive list, the previously vague term remains unclear. Instead, the applicant would have to describe the electric apparatus so precisely that it can be classified. For example, they could replace ‘electric apparatus’ with ‘electric toothbrushes and electric razors’. If they only want to use the trade mark for razors, they should choose ‘namely’ instead of ‘in particular’.

The classification is for administrative purposes only. This means, for example, that in principle you enjoy exactly the same protection if your trade mark is opposed, regardless of whether it is correctly or incorrectly classified. But be careful! Terms with a double meaning are an exception. In such cases, the class specifies the term. For example, if you claim protection for ‘string’ in Class 22, the trade mark will be protected for the type of string used for tying and fastening purposes and not the type used for musical instruments – even if you actually want to protect musical strings.

Correct classification is always the responsibility of the applicants. If they classify something incorrectly, they must accept that the designation will be misunderstood. Or that a competitor won’t be able to find their trade mark in a trade mark search, as most search services generally only search for class numbers. Conversely, if they monitor the ‘wrong’ class after registration, they won’t notice new, similar trade marks either and could therefore miss the opportunity to file an opposition.

Before registering a trade mark, you should carefully consider which goods and/or services you want to claim protection for. This involves looking ahead. If you want to expand your range in the foreseeable future, you can enter the planned goods and services in the list of goods and services at the time of application – even if the sign won’t be used immediately for all the goods or services claimed. After you’ve registered, you can no longer extend your list.

Yet the aim isn’t to protect as many goods and services as possible from the start, partly because of the costs involved. And also because a trade mark must actually be used within five years of registration for the goods and services claimed. Otherwise, your right to protection will in principle expire for the goods not traded or the services not provided.

In this case, you need to register a new trade mark for the new goods or services. We recommend carrying out a search to clarify whether a similar trade mark has already been registered for similar goods or services.

If you don’t know where to start, it may be worth taking a look at the goods and services claimed by competitors in www.swissreg.ch. That will give you an idea and help you create your own list. However, you should still check the classifications of individual goods and services, as they can change over the years.

Ultimately, goods and services must be named precisely and clearly. Unclear terms can affect the scope of protection. You can check terms for conformity and search for all permitted terms for goods and services in our classification tool at wdl.ige.ch (in German, French and Italian). These classes are also available if you register your trade mark via e-trademark. If you use these terms, there’s a good chance that your application will be processed faster, that is, that it will be reviewed in an early trade mark examination.

The top five most registered LGS classes in 2023 were: Class 35 (incl. advertising, business management), followed by Class 9 (incl. CDs, computers), Class 42 (incl. scientific and technological services), Class 41 (incl. education, training, entertainment) and Class 36 (financial, insurance and real estate services).

In the case of Class 35 at least, it’s unclear whether all the applicants have correctly classified their services or whether some of them have misunderstood the class. As already mentioned, if you only advertise on your own behalf, you aren’t a provider of advertising services. So you can’t use this class.

However, the top five do show that Switzerland is an innovative country (applications in Classes 9 and 42) and a financial centre (Class 36), that Swiss people do a lot of further training to achieve the qualifications they need (Class 41), and that they also lay great store by entertainment (Class 41).

Previously, virtual goods could not be claimed as independent goods at all. Now they can be protected in Class 9 (similarly to downloadable media). However, if you display goods virtually and offer them, for example, in the Metaverse, you must name them explicitly, for example ‘downloadable virtual clothing’ or ‘virtual watches’.

We won’t reclassify trade marks that have already been applied for or registered. In the event of changes, trade mark owners should in particular adjust their monitoring strategy so that they can continue to monitor all desired goods and services in the corresponding classes.

Trade mark consultants can help if you’re looking for advice on which goods and services it would make sense for your company to protect. You should also consult specialists if you’re seeking protection in countries such as the United States, which use their own system in addition to the Nice Classification.

If you have any questions about the correct classification, we’ll be happy to assist. Just phone us on 031 377 77 77 You can also email us questions about the LGS classes at wdlnot shown@ipito make life hard for spam bots.ch.

• Further information about the goods and services classes
• Classification tool
• Trade mark consultants in Switzerland
• Fact sheet on early trade mark examination