Did you know that a trademark application must be filed in association with the goods and services with which the mark is intended to be used? Without forgetting that the goods and services covered by a trademark must be grouped according to a international classification system grouping together 45 classes of products and services. 

One of the most important aspects of a trademark application is therefore to select the right descriptions for your goods and services and to ensure that they are placed in the right Nice classes.

What is a Nice class?

Nice classes are predefined categories used for trademark registration by nearly 100 countries worldwide, including the United States and Canada. There are 45 classes of goods and services – Classes 1-34 are dedicated to goods and classes 35-45 are dedicated to services. (Click here to view them.) 

The World Intellectual Property Organization (WIPO) provides comprehensive guidance and listing of online classes. the Madrid Products and Services Manager is a search tool available on the WIPO Intellectual Property Portal and can be used to help determine in which Nice class a description of goods or services should fall.

How do I choose which products and services to include in a request?

Although it is best to include all applicable goods and services in a trademark application in order to obtain the strongest and broadest protection for your trademark, the costs for apply for trademark registration depend on the number of classes of goods and services covered.

It is therefore necessary to select the right products and services and then classify them according to the Nice classification. You may then have to make choices in order to stay within your budget. Do I really need it? 😉

It is not possible to add goods and services to expand the scope of the registration once the application has been filed.

This is why choosing the right product and service descriptions and the right classes is so important. If you choose the wrong ones, your brand will not be adequately protected. A trademark agent will be able to ensure that you select the right descriptions, the right classes and above all that you get the right protection.

How to ensure that the products and services will be considered acceptable?

The Canadian Regulations require statements of goods or services to describe each of those goods or services in a way that identifies a specific good or service and must be classified according to the Nice Classification System. The Canadian examiner will require that the goods and services be described in ordinary commercial terms. 

The Canadian Intellectual Property Office (CIPO) is (very) demanding as to the specificity of the description of goods and services. Indeed, many terms that are acceptable in other jurisdictions are generally not considered acceptable in Canada! 

The following three-pronged test is applied to determine whether the list of goods and services is considered specific enough:

1. 1. Are the goods or services specific enough to determine whether the mark gives a clear description of the nature or quality of the goods or services?
   2. Are the goods or services specific enough to ensure that the applicant will not obtain too broad a protection
   3. Are the goods or services specific enough to assess confusion? 

CIPO publishes the Products and Services Manual. This free database is useful to help you find examples of acceptable descriptions and pre-approved terms.

Determining the list of goods and services as well as the appropriate Nice classes before filing your trademark application can be quite a complicated process. Registering your trademark in the appropriate class(es) is a key part of your overall trademark protection strategy.

Let us accompany you

When you file your trademark application with the help of Mintbox, we take care of drafting and classifying the goods and services for you.

We are licensed trademark agents with expertise in drafting and prosecuting trademark applications as well as managing and defense of trademarks.

Our trademark agents will team up with you to assist you in the registration process which can be long and complex.