Goods and Services. It all comes down to the classes. Part 1

The United Kingdom’s registration system is based on a globally recognised class system that covers various aspects of service and goods trade. The legal framework, general classification principles, and the goal of classification are all outlined in this guide.

The United Kingdom employs “The International Classification of Goods and Services,” commonly referred to as the “Nice Classification,” to facilitate effective trade mark searches. The Office for Harmonisation in the Internal Market (OHIM) and more than 140 other countries use the International Classification, which is overseen by the World Intellectual Property Organisation (WIPO). Of these nations, 66 use the Nice Classification for classification purposes even though they are not parties to the Nice Agreement, while 83 are.

The system, which consists of 45 classes, helps the registry conduct effective register searches by classifying broadly similar goods or services into categories. Goods are in classes 1 through 34, and services are in classes 35 through 45. It also allows businesses to check whether there are registered marks that conflict with marks they are using, or propose to use, in respect of particular goods or services. The significance of classification for applicants in identifying the limits of infringement rights cannot be overstated, even though it may be viewed as an administrative tool. The validity of any rights resulting from a subsequent registration may be questioned later if the goods or services are incorrectly classified on an application. As a result, a mark may be the focus of legal action to have it taken off the register.

The classes

There are 45 classes for both goods and services: 1 through 34 for goods and 35 through 45 for services.
WIPO’s “International Classification of Goods and Services” (10th edition, published in 2011) provides a detailed description of classification. The Registry has created its own classification tool, Trade Mark Classification Search, to supplement the WIPO list. It is available on the Office’s website under the Trade Marks section and can be accessed at www.ipo.gov.uk/tm/t-find/t-find-class.htm. The Registrar’s perspective on the classification of goods or services is represented by this searchable database, which is compiled from data kept on the Register. It contains over seventy-five thousand entries (including all the entries found in the current edition of the WIPO list) and is a valuable aid in the classification of goods and services and the framing of specifications.
You can use the Trade Mark Classification Search Tool by going to www.ipo.gov.uk, selecting the Trade Marks button, then On-line TM Services, and lastly Classification. Once you reach the Tool, help is given on how to access information from the database

The International Classification (Nice Classification)

The Tenth Edition of the “International Classification of Goods and Services” list, which is currently in two sections, went into effect on January 1, 2012. Two alphabetical lists—one for goods and one for services—make up Part 1. In Part 2, the classes are listed numerically, and the classes of goods and services are listed alphabetically beneath each class.
The statute outlines the UK’s legal standing for using the International Classification.

Section 34(1) of the Trade Marks Act states:

For the purpose of registering trade marks, goods and services must be categorised using a predetermined system.
And, under Rule 7 of the Trade Marks Rules 2008:
(1) The prescribed system of classification for the purposes of the registration of trademarks is the Nice Classification.
(2) When a trademark is registered, it shall be classified according to the version of the Nice Classification that had effect on the date of application for registration.
In the UK, there are three organisations that offer trademark registrations: OHIM, WIPO (via the Madrid Protocol), and the UK Registry. All of these organisations classify goods and services in accordance with the International Classification as administered by the WIPO.

Finality of the Registrar’s Decision

Section 34(2) of the Act

According to Section 34(2) of the Act:

“Any question arising as to the class within which any goods or services fall shall be determined by the registrar, whose decision shall be final.”

Section 34(2) gives the registrar the final say over how to classify goods and services, even though the UK Intellectual Property Office (IPO) follows the International Classification system. Applications for Community Trade Marks (CTM) submitted to the Office for Harmonisation in the Internal Market (OHIM), which also has discretion over classification issues, are subject to the same principle.

The system of International Classification is not all-inclusive. The registrar is responsible for assigning a particular item to the most appropriate class if it is not specifically listed under the classification system. In the GE Trade Mark case (1969 RPC 418), Graham J. stated:

“This section, in my judgment, is dealing with administrative matters and enables the registrar to decide without appeal in which class any particular goods must be registered. It does not oust the jurisdiction of the court to decide, as in the present case, whether any goods as to which there is a dispute properly fall within the specification.”

However, this authority does not extend to international registrations designated to the UK. Under the Madrid Protocol, the World Intellectual Property Organisation(WIPO) is responsible for determining the classification of goods and services included in specifications recorded in the International Register.

Need for Clarity

Rule 8(2)(a) and (b)

According to Rule 8(2):

(2) Every application shall specify:
(a) The class in the Nice Classification to which it relates; and
(b) The goods or services appropriate to the class, described in a manner that clearly indicates their nature and allows them to be classified within the Nice Classification system.

The Postkantoor (C-363/99) decision reaffirmed that the scope of registered rights must be determined with legal certainty. Ensuring clarity and consistency in specifications benefits all users of the trademark system, including applicants, examiners, and third parties conducting searches. Ambiguous or unclear specifications should not inconvenience searchers or create uncertainty about the scope of protection.

Examiners must ensure that all terms used in a specification are clear and understandable. While an examiner may request clarification from an applicant, this does not necessarily mean that the term itself is inappropriate. The key test is whether the descriptions provided allow an average person in the relevant trade to clearly ascertain the nature of the goods or services without requiring further explanation.

Ideally, terms should be defined in mainstream dictionaries. However, it is also acceptable to use specialist dictionaries or industry-specific terminology, provided they are widely understood and correctly classified. Additionally, new industry terms—particularly those that have gained recognition online or within specific trades—may be accepted if they are clearly understood within the relevant sector.

Examiners must not approve an item in a specification unless they are satisfied that:

1. The description of goods or services meets the clarity test outlined above, ensuring that an average person in the relevant trade can clearly ascertain the nature of the goods or services without requiring further explanation.
2. The goods or services fall within the correct class or classes designated in the application form, aligning with the Nice Classification system.

Maintaining this standard ensures legal certainty, consistency, and transparency in the trademark registration process, benefiting both applicants and third parties conducting searches.

In Part 2 we shall look at the meaning of these terms.

Michael@trademarkroom.com