I will continue my informative articles on industrial property classification systems with the trademark classification.
As a reminder, IPC codes determined according to the Strasbourg Agreement are used in patent classifications, and a classification system based on the Locarno Agreement is used in design applications.
For trademark applications, the Nice classification system is used. The Nice Agreement was signed in 1957. The Nice classification system was designed to prevent the problems arising from the lack of classification of the goods and services in the registration, examination, publication, and other related stages of trademarks, and with the system introduced by the Agreement, it was aimed to eliminate the existing confusions and to apply a standardized classification system on an international scale. It is not necessary to be a party to the Nice Agreement to benefit from this system.
The Nice classification consists of 45 trademark classes, where Classes 1 to 34 are for goods and Classes 35 to 45 are for services. Of the last 11 classes, which are assigned to service items, the first 8 were added in 1962 and the last 3 in 2000.
When filing a trademark application, one or more classes should be selected and their fees should be paid, and the items that will specifically be used within the classes should be selected, and the items that will not be used should not be included in the application.
In order to convey the purpose of trademark classification, it would be appropriate to refer to the registration criteria of trademarks.
Grounds for trademark refusal are divided into two, namely absolute grounds for refusal and relative grounds for refusal. Absolute grounds for refusal include the evaluation criteria based on which the Turkish Patent and Trademark Office may refuse the trademark application ex officio. A trademark application containing signs as set out in the provision of Industrial Property Law Article 5/1-ç, provided among the said absolute grounds for refusal, shall be refused by the Turkish Patent and Trademark Office.
5/1-ç) Signs which are identical to or indistinguishably similar to a trademark, which has been registered or for which an application for registration has been filed earlier, relating to identical goods and services or to goods and services of the identical type.
According to this universal principle, the said registration obstacle is a reflection of the “priority principle” that forms the basis of the trademark law.
Relative grounds for refusal are the grounds based on which third parties may object to the published trademark within two months from the publication of the trademark and cause the refusal of the trademark application.
The following article, which is among the relative grounds for refusal in trademark registration, is also related to the trademark classes.
ARTICLE 6 – (1) An application for trademark registration shall be refused upon opposition if there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark, due to identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered.
According to both articles, if there is an earlier trademark application in the same or similar class, trademarks that are identical or indistinguishably similar to the said trademark cannot be registered.
Therefore, the classes in which a trademark application will be filed both provides information on the business lines in which the applicant will use the trademark and facilitates the necessary research to be conducted before the application is filed to avoid refusal of the application based on the above-mentioned articles.
Let us continue with examples from the Turkish Patent and Trademark Office Trademark Examination Guide. In its decision dated 10.04.2014 and numbered E. 2013/296 and K. 2014/63, Ankara 3rd Intellectual and Industrial Property Rights Civil Court evaluated the sign on the left below as the same as the two signs on the right, even though the fonts and coloring of the signs are different.
According to another decision, the evaluation of indistinguishable similarity within the scope of subparagraph 5/1-ç was made on the basis of word elements and the trademarks were deemed indistinguishably similar, since the shape element in the sign shown on the right below was not dominant in the overall sign.
Therefore, the registration of an identical or indistinguishably similar trademark in the same class of goods or services is a ground for refusal according to the absolute grounds for refusal, and if it is not refused in the ex officio examination, it may be refused as a result of an opposition according to the relative grounds for refusal. However, during this evaluation, the classes should be examined thoroughly. In other words, the cases where the goods and services included in the later application are exactly the same as the earlier application can be identified as full identity, and the cases where later application is intended to be registered for more general goods or services can be identified as partial identity.
In other words, whether the classes of goods and services are general or specific, in the upper group or in the lower group is important both in the evaluation of the ex officio refusal and in the evaluations during the opposition processes. While the decision to be made may vary according to this detail, it may also be possible to obtain a registration by limiting the goods or services in the later application. So, for example, Class 45 is normally as follows:
Legal services (including consultancy in intellectual and industrial property rights).
Security services.
Matrimonial agency services.
Funeral services.
Clothing rental services.
Fire extinguishing services.
Escort services.
Consultancy services for occupational safety.
Social networking services.
If you have established a company that will only carry out business within the scope of industrial property and law, it will be sufficient to select class 45 in your application and add only the first item. In this case, the risk of conflict with another application regarding the other items will be eliminated.
In summary, the criteria set out in the articles of the law have been set in order to ensure that a good or service is not misleading or confusing for the consumer. In the evaluation of these criteria, it is important that both the trademark itself and the classes selected are determined according to the business segment in which the trademark is actually intended to be used, for the application processes to proceed smoothly.
