Trademark search, the Nice Classification system and identical marks

You have a fantastic idea for your company and launch it with a beautiful and striking brand name and/or logo, but did you remember to check that your chosen name is available first? Danielle Jovanovic explains the importance of determining the right class of goods or services in your trademark search strategy.  

We have previously written about the importance of undertaking trademark availability and clearance checks before investing in the launch of a new brand name. The consequences of launching a company or product name that infringes on another party’s existing trademark rights can be severe. If you are barred from using the trademark, you will need to rebrand your product(s) or business, and you may have to recall products, replace packaging and pay damages to and/or the legal fees of the other party. While trademark infringement cannot always be prevented, you can limit the risks of trademark infringement by undertaking trademark searches for your brand and/or logo earlier in the brand development process. 

The Nice Classification system and trademark searches  

It is important to determine for which products and/or services you plan to use your brand before you undertake a trademark search. A trademark registration gives its holder the right to object to the use of a similar sign for similar products and/or services (from the date of registration) if this may cause confusion among the public. But what constitutes a similar product or service? 

Trademark registries use the Nice Classification system to organise trademarks into certain classes. This makes it possible for identical brands for unrelated products and/or services to coexist. A good example here is 'Ajax’, which is both the name of Amsterdam football club and a brand of cleaning products and fire extinguishers. 

When determining the classes for your trademark searches, it’s important to search across all relevant classes. For example, if you work in catering, you should also consider searching against food and drink, and vice versa. 

Famous marks and class exceptions 

The international system for classifying products and services has a total of 45 classes (34 for products, 11 for services). When you register a trademark, you must select which of these classes (and sub-classes) apply, and that registration will determine the scope of protection of your trademark, thereby enabling identical brands for non-related products/services to co-exist. 

However, an exception to this rule does apply in the case of ‘famous’ trademarks (i.e., trademarks ‘with reputation’). To protect the goodwill of well-known brands (such as Cola-Cola, Nike, and so on), their owners enjoy an extra layer of protection under trademark law. Brands are deemed to have the necessary level of reputation when it can be proved that a significant part of the audience recognises the brand name or sign. 

Irrespective of the Class in the registration, the owner of a well-known trademark can act against any third-party use of an identical or confusingly similar sign if the third-party trademark detracts from or takes unjustified advantage of the reputation or distinctive character of the well-known trademark. For example, if it damages the reputation of or seeks to ‘free ride’ on the goodwill of a well-known trademark (also known as ‘passing off’ in jurisdictions such as the UK). 

This exception only applies, however, if the third party has no valid reason for using the trademark. If a third party can demonstrate that they have a valid reason to use the corresponding sign, infringement will not have occurred. Consider, for example, a BMW dealer that wants to be able to use the BMW brand. 

Planning for the future 

Finally, when determining which products and/or services to search against, it is also important to consider your future business plans. If you do not take your future strategy into account, you could miss the potential for conflict in other classes, causing problems later down the line when you seek to expand your brand into new markets or territories.  

You could also miss the opportunity to cover those products and services in your original trademark registration, meaning that you would need to file a subsequent application (it is not possible to add products and services later to an existing trademark registration). While there is an obligation to use the trademark in those classes to safeguard it from cancellation actions, you have a ‘grace period’ of five years (in jurisdictions such as the EU) before you will need to be able to prove that use if you are challenged.  

We recommend working with a trademark specialist, such as Novagraaf, who can advise you on the necessary parameters for your trademark search and help you plot your next steps effectively when you receive the search results.  

To find out more about how to overcome common legal and commercial pitfalls in brand launches, download our white paper ‘Mind the gap: How to integrate IP into brand development’, or for specific advice, speak to your Novagraaf attorney or contact us below.   

Danielle Jovanovic is a Trademark Associate at Novagraaf in Amsterdam.