How to draft a trademark’s list of goods and services – Nice classification

How to draft a trademark’s list of goods and services – Nice classification

Want to protect a company name or register a logo? Before you even reach for a trademark application form, the first step is drawing up a correct list of goods and services in line with the Nice Classification. Many business owners treat this stage as a formality. In reality, the quality of that list determines whether your brand is genuinely protected – or whether your trademark certificate of protection ends up being a document with no real value.

In this article we explain what the Nice Classification is, how to correctly classify goods and services, which mistakes to avoid and – just as importantly – clear up a few myths that still circulate among business owners.

 

What is the Nice Classification?

The Nice Classification, formally known as the International Classification of Goods and Services for the Purposes of the Registration of Marks, was established under the Nice Agreement concluded on 15 June 1957 in Nice. It is used by intellectual property offices around the world – including the Patent Office of the Republic of Poland (PPO) and the European Union Intellectual Property Office (EUIPO).

The system consists of 45 classes:

  • classes 1-34 – goods (physical products, raw materials, materials),
  • classes 35-45 – services.

Each class has a heading that broadly describes its content, but what actually matters for an application is the specific terms listed – not the class number or its heading.

A few examples show just how varied the content of a single class can be:

Class Example goods or services
Class 9 computer softwaretelephoneseyewearbicycle helmetscameras
Class 11 lampsovensbathtubsradiatorsair conditioning units
Class 25 clothingfootwearheadgear
Class 35 advertising servicesbusiness managementretail sale services
Class 41 trainingeducationorganisation of cultural events
Class 45 legal servicessecurity servicesonline social networking services
Note: a single class can group goods or services that seemingly have little in common. Trademark protection covers only the specifically listed goods and services – never the entire class.

 
Trademark protection covers only the goods and services expressly listed in the application. Not “the whole class”, not “similar products”, not “anything that fits the heading”. Only what is actually written down.

Example: if a company makes suitcases and registers its mark in class 18 for suitcases only, and a year later starts selling belts under the same name, trademark protection will not extend to the new product. Nor is it possible to add “belts” to an existing registration. A competitor registering an identical or similar name for belts could therefore act perfectly legally.

Another issue is the risk of collision with third-party marks. A well-constructed list – neither too broad nor too narrow – can help avoid a conflict with someone else’s mark, without giving up on important areas of the business.

 

Protecting a name – what can and cannot be registered?

Before we go further, one point needs clarifying. Clients of our IP law firm very often ask about a “patent on a name” or say they want to “patent their company name”. This is a common linguistic – and conceptual – mistake.

Patents cover technical inventions – not names. There is no such thing as a patent on a name, and there never will be. Protection for a name used in trade – a company name, a product brand, a shop name or a logo – is granted through trademark registration. The correct terms are: trademark protection, trademark application, logo registration, or simply filing a trademark application with the relevant national office or EUIPO.

It is also worth knowing that trademark protection is something different from reserving a company name with a commercial or company register. Registering a company does not grant any exclusive rights to use that name in trade – only a registered trademark does that.

 

The Nice Classification and national business codes – two entirely different systems

One of the most common misunderstandings we come across at our IP law firm is the belief that Nice classes “correspond” to a company’s national business activity codes, or that a trademark application should cover the same areas the company has listed as its registered business activities.

A national business classification (such as Poland’s PKD) is a system created for statistical and administrative purposes, used when registering a company with the relevant commercial or company register. The Nice Classification is an independent, international system created solely for trademark registration purposes. The two systems have nothing in common beyond both being, in some sense, classification systems.

Practical takeaway: if your company’s registered business activity is “retail sale via the internet”, that does not mean it is enough to file your mark in class 35 alone. You need to separately identify which specific goods you actually trade in, and list them – and these may fall into several different Nice classes.

 

How to classify goods and services correctly – step-by-step examples

Below are a few real-world scenarios that show what a correct classification should look like.

Example 1 – a natural cosmetics manufacturer

Green Meadow Ltd. produces face creams, shampoos, soaps and body oils under its own brand. It also plans to launch a skincare blog and run cosmetics workshops.

A correct list should include:

  • Class 3 – face creams; shampoos; soaps; cosmetic body oils,
  • Class 41 – organisation of skincare workshops; educational services in the field of cosmetics.

Common mistake: filing for class 3 only and leaving out class 41. Once the company starts running paid workshops under its brand, those services will not be protected.

Example 2 – a restaurant and catering business

Mr. Thomas is opening a restaurant called “Golden Bowl” and also plans to offer catering services for corporate events.

A correct list should include:

  • Class 43 – restaurant services; bar services; catering.

Common mistake: filing in class 43 for “restaurant services” only, with no mention of catering. Technically, catering is a separate service – leaving it out can make it harder to enforce your rights once a competitor starts offering catering services under a confusingly similar name.

Example 3 – an online shop selling electronics and bicycle accessories

TechBike Inc. sells smartphones and headphones online, alongside bicycle helmets, bicycle lights and bicycle computers. It also runs a bicycle repair service.

A correct list should include:

  • Class 9 – mobile phones; headphones; bicycle helmets; bicycle computers; bicycle lights,
  • Class 35 – online retail services in relation to consumer electronics, bicycle accessories,
  • Class 37 – bicycle repair; bicycle maintenance.

The class 9 trap: bicycle helmets and smartphones fall into the same class 9. A filing that covers only “electronic equipment” in class 9 will not cover helmets, since they are protective gear rather than electronics – the specific goods need to be listed precisely.

Example 4 – a beverage producer (the class 32 and 33 trap)

Nowak Craft Brewery produces beer, fruit ciders and grape wines under a single brand.

A correct list should include:

  • Class 32 – beer; non-alcoholic cider
  • Class 33 – grape wines; cider

Classic mistake: filing in class 33 only under the heading “alcoholic beverages”, since beer – even though it is an alcoholic beverage – is classified in class 32, not class 33. This is one of the most common classification errors in the food and beverage industry.

Example 5 – a marketing agency that also runs training courses

Creative Agency Ltd. provides advertising and PR services to clients, and also runs paid digital marketing training courses and sells its own e-books.

A correct list should include:

  • Class 9 – e-books; electronic publications
  • Class 35 – advertising services; public relations; brand management,
  • Class 41 – organisation and conducting of training courses; education in the field of digital marketing; publication of e-books.

Mistake: filing in class 35 only – when training courses and publishing fall under class 41, not 35.

 

A list that is too broad can also cause harm

Intuition suggests: “the more classes, the better the protection.” That is not true. An overly broad list of goods and services creates several problems:

  1. First, every additional class in an application means an additional official fee.
  2. Second, trademark rights can be lost if a mark is not genuinely used for given goods or services within 5 years. A trademark registration can be revoked for the unused goods and services on the application of a third party, such as a competitor wanting to register a similar sign.
  3. Third – a broad list increases the risk of collision with earlier, third-party marks. Instead of avoiding a potential conflict, an overly broad application can walk straight into one.

 

The TMclass tool – where to find the right terms

When drawing up a list, it is worth using the official TMclass tool. It contains tens of thousands of terms pre-approved by European IP offices, including the Polish Patent Office. Using TMclass terminology significantly speeds up examination and minimises the risk of an office action.

It is worth remembering, though, that TMclass does not cover every possible product or service – particularly niche or novel ones. In such cases, the description needs to be drafted independently, in line with the general rules of the Nice Classification. This is where a trademark attorney can help.

 

Trademark collision – how does the list affect the safety of a registration?

Before filing a trademark application, it is important to check whether similar marks are already registered for similar goods or services in the relevant databases. If such marks exist, their owner may oppose your application and cause it to be refused.

The good news is that collision is always assessed by reference to specific goods and services – not classes as such. If a competing mark is protected for lighting fixtures, and you want to register a similar name for sanitary ceramics (which falls into the same Nice class as lamps), there is a real chance of coexistence – provided the list is carefully constructed.

That is why a trademark search and an analysis of the list of goods and services should go hand in hand. A trademark attorney at PATENTBOX will carry out a comprehensive registrability search and help you draft a list of goods that minimises the risk of collision – without weakening your brand’s protection.

 

Summary – 7 rules for a correct list of goods and services

  1. List specific goods and services – do not rely on a class heading or the class number alone.
  2. Think ahead – once you file, you cannot extend the list. Consider what business activity you plan to carry out over the next few years.
  3. Do not list goods you do not intend to offer – an overly broad list generates costs and the risk of revocation.
  4. Check whether your goods “straddle” different classes – like beer (class 32) and wine (class 33), or clothing (class 25) and textiles (class 24).
  5. Do not forget ancillary services – an online shop is not just the product you sell, but also a retail service in class 35.
  6. Use TMclass terminology – it speeds up examination and reduces the risk of office actions.
  7. Consult a trademark attorney – before filing, not after.

 

Need help with your list of goods and services?

PATENTBOX, an IP law firm based in Poznań, helps businesses at every stage of the trademark registration process – from drawing up the list of goods and services, through registrability searches, to representation before the relevant national offices and EUIPO. Get in touch with us, and a trademark attorney will answer your questions and propose an optimal brand protection strategy.

 

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    FAQ – frequently asked questions about the Nice Classification

    What is the Nice Classification?

    The Nice Classification is the International Classification of Goods and Services for the purposes of trademark registration, established by the Nice Agreement of 15 June 1957. It consists of 45 classes – 34 classes of goods (classes 1-34) and 11 classes of services (classes 35-45). It is used by all the major intellectual property offices worldwide, including the Polish Patent Office (PPO) and EUIPO.

    Does trademark registration protect an entire Nice class?

    No. A trademark is protected only for the specific goods and services listed in the application – not for the entire Nice class. If a mark is registered in class 9 for computer software, protection does not automatically extend to bicycle helmets or telephones, even though these products also belong to class 9.

    Is the Nice Classification the same as a national business activity code (such as PKD)?

    No. A national business classification, such as Poland’s PKD, is an entirely different system used to register a business with the relevant commercial or company register. The Nice Classification is an independent international system used solely for trademark registration. The business codes assigned to your company have no bearing on which Nice classes you should choose for your mark.

    Can the list of goods be extended after a trademark application has been filed?

    No. Once a trademark application has been filed, the list of goods and services cannot be extended. Only corrections that do not broaden the scope of protection are allowed. This is why it is so important to draw up a correct and comprehensive list before filing.

    Can you patent a company name?

    No – this is a common misconception. There is no such thing as a patent on a name. Patents cover technical inventions. Protection for a name, logo or other sign used in trade is granted through trademark registration. The correct terms are: trademark application, trademark registration, or trademark protection.

    What is TMclass and how is it used?

    TMclass is the official search tool for terms describing goods and services, run by the network of EU intellectual property offices. It contains tens of thousands of terms pre-approved by individual offices, including the Polish Patent Office and EUIPO. Using TMclass terminology when drawing up a list speeds up examination of the application and minimises the risk of an office action.

    How many Nice classes should a trademark application cover?

    There is no single answer – the number of classes should match your actual or planned scope of business. A list that is too narrow will not fully protect the brand; a list that is too broad exposes the mark to a non-use challenge and increases costs, since each class carries its own official fee. A trademark attorney can help you draw up an optimal list.

     

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