Registering a trademark in the UAE or anywhere in the world is not a mandatory legal requirement. However, registering a trademark essential for companies to build a loyal customer base, increase brand visibility and protect the brand from trademark infringement. Understanding the trademark standard procedures is critical for e-commerce companies as they are highly vulnerable to infringement and counterfeiting.
Filing a trademark under the right trademark class is a crucial requirement while registering a trademark. It may result in the trademark owner losing their rights to enforce their trademark rights if an infringement happens. In this blog, we will discuss the trademark classes relevant to the e-commerce sector. Moreover, trademark agents in the UAE can help you to determine the right classes. Read ahead for more insights:
What’s the Appropriate Trademark Class for E-Commerce Brands?
The UAE follows the NICE Classification system for classifying trademarks under relevant goods or services. The NICE Classification class has 45 classes of goods and services from which you need to choose the class that accurately represents your goods or services. As far as e-commerce brands are concerned, Class 35 is the most appropriate trademark class.
What Does Class 35 Represent under the Nice Classification?
Class 35 represents services such as advertising, business management, business administration and office functions. It includes:
- Services aiming to assist in the working or management of a commercial undertaking
- Services rendered to help in the management of the business affairs or commercial functions of an industrial or commercial enterprise
- Services rendered by advertising establishments primarily undertaking communications to the public
- Declarations or announcements by all means of diffusion and concerning all kinds of goods or services
Similar Services that Don’t Come under Class 35
While determining an appropriate trademark class for your goods or services, you may be confused by other classes that represent goods or services that are similar to yours. Services such as evaluations and reports of engineers do not come within Class 35. This is because such services do not directly refer to the working or management of affairs in a commercial or industrial enterprise. Trademark agents in the UAE can help you to avoid filing your trademark under the wrong trademark class.
What Services Come within Class 42 of Nice Classification?
Class 42 is another trademark class under the Nice Classification that may confuse the e-commerce brand owners. Class 42 primarily includes scientific and technological services and research and design related to it, industrial analysis and research services, and design and development of computer hardware and software. However, similar services such as business research and evaluations, word processing and computer file management services etc. come within Class 35 only.
Should E-Commerce Brands Register a Trademark under Class 42 of Nice Classification?
Most e-commerce firms file their trademarks under Class 35. However, a brand can file its trademark under multiple classes if the specific good or service is relevant to another class. If your e-commerce brand provides the services covered by Class 42, you can file under Class 42 as well. For example, an e-commerce platform is planning to establish its website.
However, the company that provides the service of website creation is not an e-commerce platform. In this situation, the e-commerce platform need not file its trademark under Class 42. However, the company that provides the website creation service may file under 42 if they want to register a trademark in the UAE or anywhere in the world. E-commerce companies such as Amazon file their trademarks under Class 42 as they provide technical support as well.
Can I File under both Classes if Class 42 and Class 35 Are Relevant to My Mark?
Brand owners can file their trademarks under Class 35 and Class 42 if they provide both services. If multiple classes are relevant to your trademark, you should not hesitate to file your trademark under those classes. If Class 42 is relevant to your trademark but you fail to file your mark in that class, you will face difficulty in enforcing your trademark. It would lead to brand confusion if someone register a similar brand name in Class 42. Trademark agents in the UAE can help e-commerce firms to avoid such costly trademark errors.
Consult with the Best Trademark Agents in the UAE
Selecting the right trademark class is a critical requirement for all businesses including e-commerce brands. However, most companies commit costly mistakes such as failing to file in multiple classes or filing under the wrong trademark class. However, you can avoid such mistakes by consulting with the best trademark agents in the UAE such as Jitendra Intellectual Property (JIP). JIP is one of the most experienced IP firms in the UAE that can help you in safeguarding your valuable trademarks. JIP’s trademark services in Dubai include trademark registration, trademark assignment, trademark search, trademark watch etc.