Goods and Services for a EU Trademark  (PART 1) 

WHAT A STRATEGIC CHOICE!

We have already seen that for the European Union Regulation a Trademark is a sign (no matter if it’s made of letters, numbers, designs, colors, sounds, etc.) capable of “…distinguish the goods or services of one undertaking from those of other undertaking…” (Art. 1 of EU Reg. n. 1001/2017). But in this short definition the protagonist is not only and not simply “the sign”, indeed another relevant role is taken by other two “actors”, namely the goods and/or the services to be associated with the said sign.

The importance of a well-done, comprehensive and complete selection of goods and/or services, on a trademark applying for the registration, is strategical. Missing one or more products or services to be claimed for a Trademark, before going on with the registration filing procedure, as well as making a too broad choice of them, could affect both the achievement of the registration certificate, the inner value of the trademark and, finally, also the herein related business itself.

Therefore, before starting the application for the registration of a Trademark in the European Union, it’s important to have a clear idea of what are the right goods and services to apply for.

Let’s try to figure out how to approach with this kind of choice.

First of all each applicant must focus on two issues:

• The current business to be related with the Trademark; and
• The potential future business to be developed in addition with the current one.   

It’s fundamental a such strategic approach for several reasons. Once filed your Trademark application is not possible to amend it through the insertion of other different goods and services. Each Trademark application can be modified deleting some products or services, but cannot be widened with new items. This means in few words that, if you want to insert new goods or services you need to file another new application, with additional and unexpected costs. Then each Trademark should be always considered under a future perspective. The Trademark registration duration is potentially infinite, because each registered TM could be renewed for periods of ten years (starting from the date of the first deposit at least in EU) without limitations. So…why not considering also goods and services not yet marketed under your Trademark but potentially linked with your current business?!…because of with an affinity with other markets…because with a similar consumer profile…because placed in a profitable area and so on. Maybe the wider is goods’ and services’ sphere of influence, the more is valuable the Trademark.

So the right approach is to apply for as more goods and services as possible? Not properly. The right approach is to counter balance present and future needs of the business under your Trademark, having in mind the power of the Trademark registration, namely the exclusive rights of use related to the registration. So we can say that “Equilibrium” is the golden rule.

A wider Trademark, in terms of goods and products, gives for sure a higher power to the registration, but, at the same time, also higher costs and risks. And for sure more efforts in terms of resources (not only in terms of money) to be invested in.

Higher costs at least in terms of taxes, but also, under another point of view, in terms of enforcement and marketing costs to be budgeted and allocated for your Trademark in European Union. Let’s try to focus first on the “taxes” topic. The wider is the area of goods and services the more the applicant will have to pay in terms of taxes, because each product or service is normally related to macro-classes that must be claimed when applying a trademark. These classes are related to an international agreement so called “Nice Classification Agreement” (explicated in detail on the following Part 2-3) which is valid and under use also for the European Union Trademark and that contains a detailed list of goods and services made of forty-five classes. For each class, where claimed by a registrant, there is a specific cost in terms of EUIPO’s taxes, therefore the wider is the application in terms of classes, the more the registrant will have to pay. At the moment of the filing, the registrant can claim any number of classes, pointing out the specific products/services, but only one class is covered by the EUIPO basic application fee of 850,00€. If the registrant choose more classes, another fee is due for each additional one, indeed the second class needs an additional payment of 50,00€, whereas each class after the second needs a payment of 150,00€.

Higher risks are furthermore related to the odds of success related to the application. Nowadays around a 25% of the trademark applications in European Union has to bear and suffer one or more opposition/s coming from the owner/s of earlier registered trademarks. Claiming several goods and services for our trademark, rather than a more limited range, necessarily means to increase the percentage of falling under an opposition proceeding or to increase the herein related risk.

Therefore the selection of goods and or services is definitely not a simple choice. It’s really important to make a well-thought and mindful choice for the goods and services to be applied and to evaluate the pros and cons of this choice.

TMEU is ready to provide for all its clients a step-by-step assistance also for the selection of goods and services with the “Tailor-Made” service package. So…Don’t waste time and send us a message with our form.

We’ll go deeper together in the building process of Your Trademark application, selecting the best range of products and services for Your Trademark in EU!