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How to choose the right classification for trademark registration?

 

Nov 2019
Trademark registration is an important intellectual property strategy for corporates. It is the same for startups. Due to the restriction imposed by the trademark law doctrine of priority registration “each trademark can be registered in one class only”, the best way to obtain comprehensive trademark protection is to register in all classes. According to the international classification, trademarks are grouped into 45 classes.
How to conduct trademark protection effectively? It is best to prioritize word mark, and then consider figurative mark. Besides, corporates can select more premise categories according to their products and service areas. There is no need to register in all 45 goods/services classes.
As stipulated by the trademark law, corporates can choose for the initial 10 sub-classes of trademarks under each class for protection. Extra charge is required for the protection of more than 10 sub-classes. However, Benny Kong Intellectual Property Limited offers a favourable price of 60 dollars for each additional sub-class. If you have to register relatively more sub-classes, you may consider a multiple-class-protection.
For example, 微信(translated as “WeChat”)was registered for a whole class-protection in class 9 (registration no.16086554) for a comprehensive protection.
In another example, there are a total of 13 Sub-groups (group 1101 – 1113) under class 11: Sub-Groups 1111 - pocket warmers; 1112 - heaters not belonging to other classes; and 1113 - nuclear reactors etc. There are specific items with 6 digits under each sub-group, for instance 110304 – bed warmers and 110310 heated blankets under group 1111. You may choose different items across different sub-groups under the same class. You may choose a total of 10 items, with an extra charge for each additional item.
You may register one item from one sub-group for the purpose of protection of that sub-group– other applicants cannot register the same or a similar trademark as the registered one under the same sub-group. Corporates can choose the relevant goods/services classes according to their products and service, and their future directions of development. Meanwhile, corporates can make precautionary trademark registrations for common goods according to its own situation, in order to have a reasonable protection for its own trademark.
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BKIP Limited

Unit 2202, 22/F, Causeway Bay Plaza I, 489 Hennessy Road, Causeway Bay, Hong Kong
(852) 3157 0065
tm@bkip.com.hk