The International Classification of Goods and Services (ICGS) is an international classification of goods and services. The effect of a mark is determined by the selected group of goods and services specified in the ICGS. The same marks may apply to different classes, and this will not violate any rights.
If you have included certain classes of the International Classification of Goods and Services in your application, you will not be able to correct or supplement them after submission. To do this, you will have to start the registration procedure over again. Therefore, we recommend that you indicate all possible classes of goods.
For example, you applied for advertising database a food delivery company, registering its designation for class 43 (cafe). After opening, the company invested money in advertising, earned a high reputation, and people began to recognize it. And then a cunning competitor appears, registers under your sign for classes 29, 30, and 35 (food and retail) and makes money on this brand. It will not be easy to sue him, because formally one TM is used in different classes.
Add to the application those groups of the International Classification of Goods and Services that may be useful to you in the future. For example, a food delivery company can expand its capabilities by adding class 5, which includes products with dietary supplements and vitamins. If you skip this point, the trademark will not effectively protect the healthy food on your menu.
But you shouldn't add classes if you are sure that they are not related to your area at all. Each of them, taken just in case, will add from 2,500 to 4,000 rubles to the fee. Therefore, the price for registering a trademark for all 45 groups will be 223 thousand rubles. If you do not use a class for three years, you can terminate its validity by going to court.
Products and services
Goods and services are defined by the class for which the trademark is registered. One may contain products that are not related to each other, for example, refrigerators may be on the same list as nuclear reactors (class 11 of the Nice Classification). And some similar goods in the Nice Classification, on the contrary, are listed under different numbers: clothing accessories are in five different classes.
As mentioned earlier, after submitting an application, it will no longer be possible to add products. To do this, you will have to go through the registration procedure again. Therefore, in the application, it is worth describing in detail all types of products.
You can see the full list in Lexintu – Lexical-semantic identifier of names of goods and services. Their list is constantly updated: new varieties are introduced, old ones are adjusted. According to the law, an already registered trademark cannot be supplemented with a new service.
Products and services
In the application, you can use collective concepts: retail, clothing, footwear, etc. But do not forget about the goods that may fall outside the collective category. If this happens, the TS will no longer protect them. The best option is to compile a complete list of individual goods and services.
Download a useful document on the topic:
Checklist: How to Achieve Your Goals in Negotiations with Clients
Working with preliminary refusals
After submitting an application and sending documents to experts, there are three possible scenarios:
the application will be approved and you will receive a trademark certificate;
you will be sent a request on formal grounds if an error was found in the list of documents (wrong goods, incorrect duty or someone else's address);
a preliminary refusal will be received (this happens quite often).
If the application can be rejected, the expert states the reason for the rejection: for example, he found a close resemblance to someone else's sign. If you want to register, you will need to answer all the specialist's questions or even prove that you are right. You are given one chance to answer. If the expert is satisfied with the answer, the application will be accepted, if not, it will be rejected.
A preliminary refusal is several pages of legal text. They usually look scary, but in fact, this is a good sign. The expert provides a large number of arguments, which may give you a chance to challenge his decision on some of them. A short refusal is much worse: the specialist is confident in his rightness and it will be difficult to argue with him. As a rule, in the second case there is nothing to cling to, and therefore you have to challenge the expert's position only after it is disclosed independently.
Here's a little advice. To go through the official trademark registration procedure and increase your chances of success, you can contact a patent attorney. He has already carried out this procedure more than once and knows what and how to do to get a positive response from Rospatent. In case of a refusal, a patent attorney will help you challenge it.