Community TM: How do Nice classes work and how should we use them in our Trademark application?

Lawyer

My answers:

1/ Could we increase the number of classes later on, or would we need to file for a whole new Trademark?

The right response is the second one: you cannot expand the scope of your trademark along the way, you can only reduce it. So you have to file a new trademark application designating the classes and/or the products and services which are not already included in your first trademark application.

2/ We were also wondering how the Nice classes that a Trademark is registered for influence the scope of protection. There seem to be many similar (but apparently valid) Trademarks with differing classes. Does this mean that the scope of protection for your Trademark is only in industries covered by the registered classes?

A trademark is first protected for the goods and services covered in its filing in the relevant classs. But there are sometimes "bridges" between the goods and services of different classes, so that in some cases, it may be a risk of confusion between an earlier trademark and your own trademark (signs may be similar visually, phonetically and / or conceptually, products and services can be complementary). A fortiori if the earlier trademark is well-known trademark as this kind of IP right is protected - by definition - for all products and services even for those which are not expressly included in their filing. In this event, the holders of those earlier trademarks could be led to believe that your later filing is annoying and should be withdrawn or modified.

3/ Could therefore anyone register the same Trademark as ours, but in other classes, in order to cover other industries that we might want to expand into later?

It's is quite posssible, but in case of similar and / or complementary products you will be able to oppose your earlier trademark within the required time, alleging a likelihood of confusion. But this time the plaignant would be you (the reasoning is the same as for the previous point 2).

4/ What kind of decisions should we make before selecting which classes to register?

You cannot anticipate everything, even if you previously performed extensive prior art searches (among identical and similar signs) in the respective classes among the registered trademarks and pending ones having effect in the territories of interest. Indeed, their results will give you some visibility regarding the prior art and certainly let you anticipate risks and take precautions. But such searches are quite expensive (it must go through specialized companies) and sometimes difficult to interpret. And whatever precautions you will take, you will never be 100% immune from an opposition and / or later, an infringement action, rightly or wrongly … The easiest way, given your situation, is to make searches only among the identical trademarks (what we do consistently) in the countries' interest to reduce the risk of claims and attacks and file your trademark application in classes of goods and services concerned, on the basis on the results obtained. Then it will let you come and act accordingly ("wait and see")…

I would add that you do not have to ignore the risk of confusion with other signs that are, especially, company names, trade names, brands, logos and domain names that are often sources of conflict as well, especially in the field neighbor of the unfair competition and parasitism ...

Should you need any other information and details please, don't hesitate to tell me.

Sincerely yours,
Simon