Trademark registration is not just as simple as filling up and submitting a form. One of the vital aspects that you should look into when you are applying for trademark registration is the trademark classifications.
Malaysia adopts the 11th edition of the Nice Classification, the International Classification of Goods and Services which was established by the Nice Agreement to streamline the classification of goods and services during trade for the purpose of trademark registration. There are a total of 88 member states or contracting parties as on 1st May 2021, and Malaysia has acceded to the Nice Agreement on 28th June 2007. There are 45 classes in the Nice Classification, where goods fall under classes 1 to 34; while services fall under classes 35 to 45.
How to choose the correct trademark classes?
To choose the correct trademark classes, you must first determine whether your trademark applies to a good or a service, or a combination of both. A good is a physical product that people purchase from you. A service is an activity that you conduct for other people.
The next step is to prepare a specification of the goods or services for which you are using or intend to use the mark. By listing down a clear and precise specification which covers not only goods or services of immediate interest but also of future interest, the trademark classes can thus be determined more precisely.
For example, if your business is selling musical instruments and providing musical training, you should probably consider applying for trademark registration in the relevant three (3) classes as follows: -
1. Class 15 for musical instruments;
2. Class 35 for retail and advertising services; and
3. Class 41 for education or training services.
Why are trademark classifications vital?
Trademark classifications are crucial as trademark registration will protect your trademark solely in the relevant class according to the specification of goods or services that you have listed in the application. Registering your trademark under a specific class prevents others from registering the similar trademark within the same class as well as selling the same products or services with the similar trademark as you, which could create confusion during trade and mislead the consumers. However, this might not prevent someone potentially registering a similar trademark in a different class(es). Hence it is advisable to register your trademark in all the classes you think are relevant.
Selecting the wrong trademark classes or filing an inappropriate specification of goods or services could delay or derail your trademark registration. At CHP, we are always prepared to provide professional advice to guide you on choosing the appropriate trademark class(es), and customise the specification of goods or services in accordance with your business nature. Please feel free to get in touch if you need our assistance in drafting a specification of goods or services which is unique to your business!
If you have any queries on the above, please feel free to contact the authors of the article, Henry Phoon (henryphoon@chphoonlaw.com.my) or Carmen Wong (carmenwong@chphoonlaw.com.my).
** This article is intended for general information of the clients of our Firm. It should not be regarded as legal professional advice. If you require advice based on specific facts, please feel free to contact us.
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