In a Class of their own: Tying your brand name to your offerings

You might have wondered how trade mark registration can grant exclusive rights to use a brand name or logo, when trade marks like POLO are used by multiple companies for their products.  The key concept here is that of trade mark classification.

Rather than offering universal protection against the unauthorised use of your brand under any circumstances, trade marks are registered against particular classes of goods and services, and to maintain trade mark protection you must be able to demonstrate that you are using your brand in conjunction with those goods and services.  It is therefore crucial that your trade mark application is drafted carefully, by specialist service providers with experience of the trade mark system.

The classes in which you will need to register depend on your business plan.  But care must be taken when determining the appropriate classes, as if you register in too narrow an area, and your business later expands into providing new goods and services, you may find yourself infringing another person’s rights.

Referred to above, Polo is one of the more prominent examples used to illustrate the concept of classification.  It is a mark used in connection with at least three classes of goods, by different companies, each with their own registered trade marks: confectionary; clothing; and automobiles.  Another example is that of the hotly contested APPLE trade mark, registered initially by two different companies for different types of products and services.  As the computing company extended its operations into the creative industry, taking advantage developments in technology, it became engaged in legal disputes with the owner of the Beatles’ record label Apple Corps.  The ensuing lawsuits serve to act as a caution, demonstrating the importance of the careful drafting of trade mark classifications.

Finally, it is important to note that amending the classifications against which your mark is registered will involve filing a fresh application, and incurring the associated costs.  Ideally, if you know your business plans well enough at the time you first register your mark, then you may be in a position to cover all the business categories you are likely to need in the short to medium term within your initial trade mark application.  Otherwise, you will need to add subsequent classes later on, necessitating a new application.