Why it is Important to Register a Trademark in Multiple Classes?

Protecting your brand name through trademark registration in the UAE is vital for your business growth and further expansion plans as consumers associate a brand name with a certain perceived level of quality, reputation, and consistency. However, brands that are aware of the high level of competition in the market file their trademarks in multiple classes under the NICE Classification of goods and services. If a company fails to register its brand name in multiple trademark classes, a competitor gets the opportunity to register the same brand name in other available classes.

This creates confusion among the consumers when identical products of two different companies enter the market with the same or almost the same brand name. Talk to reputed trademark agents in Dubai before filing your trademarks as they are the right persons to assist you in filing the brand names under the appropriate classes and saves you from this undesirable situation where your competitor siphons off the benefits that you rightfully deserve. This article is an attempt to enlighten you further about this scenario.

What are Trademark Classes?

The Nice International Classification System for trademarks often referred to as trademark classes, is an international classification established in 1957 as part of the Nice Agreement. The NICE Classification is adopted by a number of countries and IP organizations as one of the most efficient systems to categorize goods and services in relation to trademark registration. The UAE has also adopted the NICE Classification system and the brand owners need to file their trademarks in appropriate classes under the system. Overall there are 45 trademark classes of which 1-34 are goods and classes 35-45 are services. The UAE doesn’t allow the multi-class filing of trademarks but the brand owners can file separate applications for each class.

Why Should You Choose More Than One Class?

As a brand owner, you should choose more than one trademark class for your brand name to ensure protection for all the goods and services in which your business trades. If you are selling corporate wears under the brand name ‘Fashion Guru’ you can register the trademark under Class 25 which is for clothes. However, you can also file for trademark registration in Dubai under Class 24 which is for Textiles. Also, you can register the brand ‘Fashion Guru’ under Class 41 if you have plans to start fashion designing workshops for young designers.

Class 41 covers trademarks related to Education/Training Provision. If you stick to file your brand name under Class 25 only, the other applicable classes especially Class 24 remain vacant and other competitors can still register.  Imagine another clothing brand ‘Fashion’s Guru’ register its brand name under Class 25 and Class 41, which are left vacant. Your chances of securing IP protection for more products under Class 25 and your plan to establish as a brand to mentor new designers are now blocked by a competitor.

Tips to Choose the Right Classes for the Trademark Registration

The process of deciding upon the additional classes that are relevant to the goods or services you provide or intend to provide is a tough task. Extensive research and guidance are essential in navigating this crucial step. To start with, the brand owners should compile a list of goods or services for which the trademark will be used. Take a cue from the following useful tips while choosing the right trademark classes:

1. Decide If Trademark is for Goods or Services

Before imitating the first move, you should ask yourselves whether you are providing a service or goods. If you are offering products only, then you need to file for relevant classes under the products (Classes 1-34). If you are providing services, then check the relevant classes from 35-45. But sometimes you may be offering both and in that case, you can file the trademark under relevant classes in both services and goods. For example, a company can sell the product t-shirt as well as offer the services of custom printing at the same time.

2. Clarity on whether Trademark is for the Whole Company, or Just a Product

Next, you need to have clarity on whether the trademark registration in Dubai is applicable to your business as a whole or to particular products. This is significant because sometimes a trademark that is applicable to your company (name, logo, etc.) may not be applicable to the specific product. Talk to experienced trademark agents in Dubai if you are confused about making the distinction.

3. Choose a Class that Describes the Finished Goods not Ingredients

Always take care to check if a class of your choice is applicable to the finished good and not a particular ingredient that constitutes the product. Making a wrong choice while filing for trademarks in the UAE may lead to delays in trademark registration or even rejection in some cases. Take time to ensure that you understand what different classes stand for and then go ahead with the registration process.

Trademark Agents in Dubai for Your Assistance

Laxity or a lack of IP awareness shown by brand owners during trademark registration in Dubai, UAE often leads to confusion among consumers. Filing your brand name in too few classes is a big sin in the trademark world as it gives the competitors a chance to make use of all the other vacant Classes that are applicable to you. As a result, the customers get confused as they are exposed to the same products with similar brand names but made by different companies. What led to this situation is the brand owner’s failure to apply in all the applicable trademark classes.

The failure on the part of the brand owner might have stemmed from a lack of awareness about trademark classes or pure laxity. The brand owners can avoid brand name or trademark confusion is seeking the assistance of well-known IP firms in Dubai such as Jitendra Intellectual Property (JIP). JIP assist the brand owners by providing them with the expertise of its highly qualified trademark agents in Dubai who assist them in selecting the appropriate classes for their brand names or logos. Trademark registration in Dubai becomes a hassle-free process with the assistance of JIP.

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