Filing International Trademark Applications: Classification

Protecting your trademark for specific and relevant goods and services is essential to your current and future brand identity. Classification of your goods and services should be an integral part of your strategy right from the beginning.

Plan ahead! Where do you see your brand going in the future, and what types of new services might you easily expand into as your brand’s reputation grows?

Tip! Think about using pre-approved terms from the Goods and Services Manager available under eMadrid, even before you file an application for a national or regional trademark registration. Using compatible terms will help to ensure a quicker turn-around time when you later want to apply for an international trademark registration, saving you time and money!

Getting classification right from the start

Did you know? The list of goods and services that your international trademark registration will cover is based on that of your national or regional trademark application or registration (“basic mark”).

The scope of protection of your international trademark registration can be narrower, but not broader. Tip! You can use some variations of terms in your international trademark application so long as they remain within the scope of the goods and services covered by your basic mark. For more information, refer to the Guide to the Madrid System.

If you want to obtain international protection for additional goods and services than those covered by your national trademark registration, you will first need to file a new national/regional trademark application through your home intellectual property (IP) Office.

WIPO classification tools to help you…

  • Familiarize yourself with the Nice Classification – the international classification of goods and services used for the registration of marks. It covers 45 classes of goods and services, ranging from Class 1 (Chemicals) to Class 45 (Legal services).
     
  • Use the Goods and Services Manager available under eMadrid (“Build goods & services”) to select from thousands of pre-approved terms to build and check your list of goods and services. This helps reduce the risk of you receiving an irregularity letter from us (WIPO) and provisional refusals of protection from individual IP Offices due to incorrect terminology, ensuring that you can secure protection of your trademark as quickly as possible.
Tip! Can’t find a specific term in the Goods and Services Manager? Search for the term in the Goods and Services Explorer also available under eMadrid (“Explore goods & services”) to find out how many times over the last ten years, we (WIPO) and major IP Offices might have accepted it – in different languages.

Three steps to checking your list of goods and services (WIPO and IP Offices)

1. Certification of your international trademark application – Classification check by your Office of Origin

Your Office of Origin will check that the goods and services you included in your international trademark application are covered by your national/regional trademark registration.

2. Formal examination of your international trademark application – Classification check by WIPO

As part of the formal examination process, we check that the goods and services you included in your international trademark application correspond to – and are grouped in – the appropriate classes of the Nice Classification.

Examples of the principles and rules that we apply

You can use class heading ‘general indications’ to describe your goods and services.

Example: Class 12 Heading: “Vehicles; apparatus for locomotion by land, air or water”.

You can classify some terms in more than one class.

Example, “Deodorizing apparatus” is accepted under:

Class 11 – which includes “deodorizing apparatus, not for personal use”; and

Class 21 – which includes “deodorizing apparatus for personal use”.

You can use terms such as “in particular”, “namely”, etc., to further specify or restrict your goods and services.

Examples:

Class 9: “Computer software, in particular computer game software”

Class 12: “Cars, namely, sports cars”

Class 44: “Landscape gardening; landscape design; lawn care; all the aforementioned services relating to public parks and gardens.”

Find out more in our examination guidelines [PDF]

3. Substantive examination of your international trademark registration – IP Offices


The IP Office of each Madrid System Member where you seek overseas protection of your trademark performs substantive examination of your international trademark registration, including checking the scope of the list of goods and services. Warning! Not all terms in the Nice Classification are accepted by all IP Offices, as they may lack clarity and/or precision. There are typically work arounds – variations that they will accept, for example:

Class 7 (class heading): “machines, machine tools…”

 

Solution: Specify the function or intended use of the machines and/or machine tools, for example, “electric machines for carpet shampooing” or “metalworking machine tools”.

Class 9 (goods): “downloadable virtual clothing”

 

Solution: Be more specific, for example: “downloadable image files of virtual clothing”.

Class 42 (services): “rental of computer software”

 

Solution: Specify the function, content, or field of use of the software, for example, “rental of computer software for financial management” or “rental of computer software for playing card games”.

Tip! Find details of specific classification requirements or limitations in the countries where you seek overseas protection of your trademark in the Madrid System Member Profiles available under eMadrid.

Find out more

Questions or need help?

Whether you need guidance on complex classification issues, or have questions about innovative products or services, our dedicated experts are here to help you. Contact us!