Trademark Classes: How to Choose Them
When you register a trademark, you also need to specify which products or services you want to register it for. The Nice Agreement established 45 classes of goods and services -classes 1-34 include goods and classes 35-45 include services. Its classification is revised every five years to make sure it is up-to-date with the latest technological changes. Argentina adopted the International classification system of goods and services in 1981; Brazil did not officially sign the Nice Agreement, but since 2000 it has been using the same classification and its updates.
Details of the application
In Brazil, it is not enough to specify the class: you also need to specify the particular products or services you want to trademark. For instance, if you want to register the trademark Ferrari, the corresponding class would be the 12, which corresponds to Vehicles; but you would also need to add a description for the product. If you apply electronically, you will have a predetermined set of terms you can choose from (in this case, Cars/Automobile); if you submit a paper application, you are free to use the description you wish to use. However, it is recommended to pursue the electronic way, not only because of the lower fees but also because the descriptions provided by the applicant can risk being rejected by the INPI, making the whole process longer and more costly. In Argentina, on the contrary, there is no need to provide a description, the indication of the class is enough.
Unlike Chile or Uruguay, neither the Argentinian nor the Brazilian system allows multi-class applications. This means, that if you sell products or provide services that cover 2 or more classes, then you would need to file 2 or more different applications.
While it is necessary to register the trademark in each class to be granted protection, it must be noted that the courts granted protection to the owner of well-known trademarks both in Brazil and in Argentina, even without a registration to a particular class. In other words, courts would give the owners the right to oppose third-party trademark registrations even in classes not covered by the original registration. Brazilian courts defined dilution as ‘an offence to the integrity of a distinctive sign, which has the effect of reducing its market power’.
Choosing Classes.in Practice!
As classifications are arbitrary, you may find that they do not exactly fit the product or service you want to register. Sometimes certain products are so complex that they are likely to fit into more than one class; what’s more, some products can also include a service. How many classes should you choose? For instance, if your company sells software but also provides training or assistance on that software, you may want to register your trademark in different classes, covering both the product and the service.
On the other hand, if your company sells clothes, you will want to register in class 25 (clothing), but not for class 23 (yarns and threads). In other words, you don’t need to register a trademark for every single component your final product is made of.