The first step is to be clear about the purpose for which the trademark will be used. Clearly defining the services or goods to be covered by our trademark at the time of registration, and taking into account our future activity, will help us to choose the appropriate and necessary classes<\/p>\n
1.\u00a0\u00a0\u00a0\u00a0 How to choose the right Nice class for my trademark?<\/strong><\/h3>\nOnce the goods and\/or services of the trademark are determined, it is time to classify that activity. To better explain this, see the following example:<\/p>\n
We will create a business that sells shoes, and we will have to apply taking into account the different classes for trademark registration. In which class should we register the trademark?<\/strong><\/p>\nIn the Nice Classification list<\/a>, Class 25 is the class including “clothing, footwear, headgear items”. Within this class, which is very broad, look for the subclass or good specification that most accurately defines our service or good. In the case of footwear sale, which is class 25, we find “shoes” in the subsection.<\/p>\nTo illustrate this more graphically, here are some examples with well-known trademarks and their main (not only) class, with their first general wording section, together with their specific wording (an excerpt, not all wording is included):<\/p>\n
![\"European](\"https:\/\/devel.singulartm.com\/wp-content\/uploads\/2021\/02\/IMAGEN-EN-2.jpg\")
<\/a><\/p>\n2.\u00a0\u00a0\u00a0\u00a0 In how many classes must a trademark be registered?<\/strong><\/h3>\nUnlike other countries, Spain has a system called “multiclass”, which means a trademark can be registered in several classes at the same time.<\/p>\n
However, the fact that this option to protect our trademark within several classes is available, it does not meant that it should be registered several of them. The trademark must be registered only in the classes in which it is going to operate.<\/strong><\/p>\nWhen choosing a class, always keep in mind two very important points:<\/p>\n
\n- Trademark activity.<\/strong> What do we want our trademark for today?<\/li>\n
- Trademark strategy.<\/strong> What will we do with our trademark tomorrow? Where can it evolve to?<\/li>\n<\/ul>\n
In this second point, the most important reflection in the trademark application process<\/strong> must be made, since once the registration of a trademark in one or several specific classes is applied for, there is no possibility of extending the classes afterwards.<\/strong><\/p>\nIt is very important to have a future strategy for the use of the trademark. Why?<\/strong><\/h4>\nGoing back to the previous example:<\/p>\n
We want to set up a business engaged in selling custom designed and hand-made shoes.<\/p>\n
Our business, whose main activity is selling shoes (class 25), is starting to do very well. Our trademark is positioned thanks to the added value of “designing unique shoes”, and we have found that there is a huge market niche in the training of footwear design techniques area<\/p>\n
In this case, to extend my trademark activity to training, would I be protected?<\/p>\n
The answer is no. <\/strong>If, at the time of applying for trademark registration, we do not consider the options of where our business activity might evolve to, our trademark will not be protected for it.<\/strong><\/p>\nNot having a well defined strategy may result in higher costs in the future and, sometimes, potential conflicts with other similar trademarks which are already registered in that class.<\/p>\n
But, at this point… do not panic! There is a solution.<\/p>\n
If the trademark activity evolves to a point that was not originally contemplated, there is the option of submitting a new application for trademark registration in the classes where the new activity is to be carried out.<\/p>\n
Here are some examples, like the one from “MONTBLANC”. <\/strong><\/h3>\nThe “MONTBLANC” trademark is registered in several different classes:<\/strong><\/p>\n
In the Nice Classification list<\/a>, Class 25 is the class including “clothing, footwear, headgear items”. Within this class, which is very broad, look for the subclass or good specification that most accurately defines our service or good. In the case of footwear sale, which is class 25, we find “shoes” in the subsection.<\/p>\n To illustrate this more graphically, here are some examples with well-known trademarks and their main (not only) class, with their first general wording section, together with their specific wording (an excerpt, not all wording is included):<\/p>\n Unlike other countries, Spain has a system called “multiclass”, which means a trademark can be registered in several classes at the same time.<\/p>\n However, the fact that this option to protect our trademark within several classes is available, it does not meant that it should be registered several of them. The trademark must be registered only in the classes in which it is going to operate.<\/strong><\/p>\n When choosing a class, always keep in mind two very important points:<\/p>\n In this second point, the most important reflection in the trademark application process<\/strong> must be made, since once the registration of a trademark in one or several specific classes is applied for, there is no possibility of extending the classes afterwards.<\/strong><\/p>\n Going back to the previous example:<\/p>\n We want to set up a business engaged in selling custom designed and hand-made shoes.<\/p>\n Our business, whose main activity is selling shoes (class 25), is starting to do very well. Our trademark is positioned thanks to the added value of “designing unique shoes”, and we have found that there is a huge market niche in the training of footwear design techniques area<\/p>\n In this case, to extend my trademark activity to training, would I be protected?<\/p>\n The answer is no. <\/strong>If, at the time of applying for trademark registration, we do not consider the options of where our business activity might evolve to, our trademark will not be protected for it.<\/strong><\/p>\n Not having a well defined strategy may result in higher costs in the future and, sometimes, potential conflicts with other similar trademarks which are already registered in that class.<\/p>\n But, at this point… do not panic! There is a solution.<\/p>\n If the trademark activity evolves to a point that was not originally contemplated, there is the option of submitting a new application for trademark registration in the classes where the new activity is to be carried out.<\/p>\n The “MONTBLANC” trademark is registered in several different classes:<\/strong><\/p>\n<\/a><\/p>\n2.\u00a0\u00a0\u00a0\u00a0 In how many classes must a trademark be registered?<\/strong><\/h3>\n
\n
It is very important to have a future strategy for the use of the trademark. Why?<\/strong><\/h4>\n
Here are some examples, like the one from “MONTBLANC”. <\/strong><\/h3>\n
![\"Register](\"https:\/\/devel.singulartm.com\/wp-content\/uploads\/2021\/02\/IMAGEN-EN-3.jpg\")
<\/a><\/p>\n![\"Nice](\"https:\/\/devel.singulartm.com\/wp-content\/uploads\/2021\/02\/IMAGEN-EN-4.jpg\")
<\/a><\/p>\n