1. The formation of risks

When we apply for trademark registration, we need to make a "trademark registration application form". One of the items is to classify the goods/services to be used with this trademark. , that is, "category". This classification is based on the International Classification of Goods and Services for Trademark Registration, also known as the Nice Classification. The Nice Classification we are using now is in its ninth edition. Since the "Nice Classification" is a basic classification based on existing goods/services, and new goods/services are constantly emerging in real life, it is impossible for the "Nice Classification" to take all of the details into account, and there will be some new goods. / The service item or special nature falls between several categories and cannot find the corresponding category in the "Nice Classification". In this case, if we are not very professional, it is easy to classify the goods/service items into the wrong category:

(1) Goods/services that should have been classified into Category A were instead classified into Category B;

(2) There are also some newly emerging goods/services. Find a similar category to divide it into.

When a registered trademark is infringed by others, you find that it is difficult to protect the trademark exclusive rights of your own goods/services with the trademark that you have worked so hard to manage.

2. How to prevent and remedy

Preventive measures

If the applicant encounters a product name/service item that is not included in the classification list, it should attach a A description of the product name/service items. When classification is required, they can be classified according to the following standards:

(1) Commodities:

1. In principle, finished products are classified according to their functions and main uses. If there is no provision in the classification table Criteria for classification, i.e., the manufactured goods are classified in the same category as other similar manufactured goods according to the alphabetical classification list, or according to auxiliary classification standards, that is, according to the materials of these manufactured goods or the method of their operation;

2. Multi-functional combined finished products (such as a combination product of a clock and a radio) can be divided into categories corresponding to the functions or uses of each component of the product. In different categories, if these standards are not specified in the category table, the standards shown in Article (1) can be used;

3. In principle, raw materials, unprocessed products or semi-finished products are classified according to their composition. Classification;

4. Commodities that form a part of other commodities are, in principle, classified into the same category as other commodities, but such similar commodities cannot be used for other purposes under normal circumstances. All other situations are classified according to the above standard (1);

5. When finished products or semi-finished products are classified according to their raw materials, if they are made of several different raw materials, they shall in principle be classified according to their main raw materials Category;

6. Boxes, boxes and other containers used to hold goods should, in principle, be classified into the same category as the goods.

(2) Services:

1. In principle, services are classified according to the industries divided by the service classification name and its annotation. Similar services in the classification table can also be arranged alphabetically. Classification;

2. In principle, services provided by the rental industry are classified into the same category as services provided through rentals (such as rental telephones, which are classified into category 38);

3. In principle, the provision of advice, information or consulting services falls into the same category as the matters involved in providing services, such as business management consulting (Category 35) and financial consulting (Category 36). The provision of advice, information or consultation by electronic means (e.g. telephone, computer) does not affect the classification of such services. ?

(3) In addition, each category has an annotation, which explains what commodities this category mainly includes, how to distinguish this category from related categories of commodities, and how to divide the categories of marginal commodities. This annotation explains the classification. Some categories for confusing items can help a lot. For example, the third category is named: Laundry bleaching agents and other materials, cleaning, stain removal and abrasive preparations, soaps, spices, essential oils, cosmetics, perfumes, toothpaste, and tooth powder. ?The annotation is:?This category mainly includes bath products and cosmetics. In particular, it includes: personal deodorants; cosmetic and hygiene products. In particular, it does not include: chemicals for cleaning chimneys (Category 1); stain removal products used in the production process (Category 1); pumice stones or hand grinding wheels (Category 8); deodorants not for personal use (Category 5) .

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Remedial methods

The cost of remediation after a trademark misclassification occurs is very high, and the possibility is also very uncertain:

(1) No Paired goods/services cannot be protected by the exclusive rights of registered trademarks and can only be re-registered;

(2) If the registered trademark has gained a high reputation after long-term use, it can be infringed upon. Obtain cross-class protection by applying for well-known trademark recognition during litigation or administrative protection.

3. Case Analysis

In recent years, a new product, aluminum-plastic composite pipe, has become popular in the building materials market. It is not included in the product classification table. What should I do? According to the product classification table, it is in the sixth category There are metal pipe products (Group 0602: Aluminum-plastic pipes), and in Class 19 there are non-metallic pipe products (Group 1909: Aluminum-plastic pipes), which are composite pipes without metal and non-metal. In this case, it is necessary to select the most similar category based on the product's performance, use, structure, main ingredients, etc., and attach a product manual. If the nature of the product is special and falls between several categories and the corresponding category cannot be found in the "Nice Classification", our safest way is to apply for registration in both categories at the same time.

There is a practical case worth thinking about. When a company registered a trademark on aluminum-plastic pipes, it accepted the opinions of the Trademark Office Application Office and registered the trademark on No. 1912 non-metallic pipes. Due to its high popularity, many people imitate its products. Among them, one is the most counterfeiting company. When the company complained to the industrial and commercial authorities and asked them to investigate and deal with the counterfeiting company, the other party showed the same trademark registered on the sixth category of metal pipes. The industrial and commercial authority that accepted the complaint returned the complaint from the party concerned.