Intellectual Property

The Power of Trademarks: Trademark Registration and Classification


The Power of Trademarks: Trademark Registration and Classification

What image comes to mind when you think of the brand Apple or Nike? For most people around the world, a bitten apple and a checkmark (commonly known as the Swoosh) come to mind, respectively. This instant correlation between a brand name and a logo (in this case, the word “Apple” and the image of a bitten apple) shows the importance of a distinct trademark.

What is a trademark? 

According to the United States Patent and Trademark Office, a trademark is “any word, phrase, symbol, design, or a combination of these things that identifies your goods or services.” It is essentially a key weapon that distinguishes your brand from competitors and protects your brand’s value, revenue, and intellectual property (IP). 

Although providing goods or services under your brand’s name or logo gives you protection to some extent, your trademark is fundamentally unprotected. This can be prevented by a simple step: trademark registration. By registering your trademark, you are provided with a public record of your trademark ownership and offered various rights that contribute to the protection of your brand’s reputation and intellectual property.

Why do you need a trademark?

Registering your trademark provides your brand with a wide variety of benefits, from distinction to protection and reputation. 

  • Distinction: A trademark protects your business against competitors as it ensures that other businesses will not be able to have similar trademarks. This makes it easier for customers to identify and distinguish your brand, products, or services from others.
  • Protection: The unauthorized use of your trademark in the marketplace, in other words, trademark infringement, leads to confusion among current and potential customers, which ultimately inflicts damage on your brand’s reputation as well as revenue. To prevent this, trademark registration is crucial as it removes the burden of proof and provides you with a long-term safeguard against infringement and further threats such as counterfeits.
  • Reputation: Once your trademark is registered, you are granted the right to use the Ⓡ symbol to indicate your exclusive ownership. This provides advance notice to any business that intends to use a similar trademark and further deters potential infringers. As a result, you are not only able to strengthen your business’ credibility but also develop recognition among customers as well as a basis for customer loyalty. 

Once you have decided to register your trademark, you’ll next need to decide on which classes you would like to register your trademark for. 

What is a trademark Class and why does it matter? 

Trademark classes are categories of goods and services that are used to identify the specific types of products or services to which a trademark applies. These classes are used by trademark offices around the world to help them determine whether a proposed trademark is available for use.  The importance of a trademark's Class lies in the fact that a trademark can only be registered and protected in relation to the specific goods or services that it is assigned. This means that if a trademark is registered in a particular Class, it can only be used in relation to the goods or services in that Class. If someone else wants to use the same or a similar trademark in relation to goods or services in a different Class, they may be able to do so without infringing on the original trademark. This is why it's important to choose the right trademark Class when applying for a trademark, as it can have a major impact on the scope of protection that the trademark is granted.

You can check out the list of goods and services in Class order using the World Intellectual Property Organization (WIPO) Nice Classification tool.

Real example:

Muji’s Trademark Conflict in China (Trademark Infringement)

Now that we know the basics of trademark registration, let’s look at a real example of a trademark infringement case and why it's so important to not only register your trademarks but ensure that you register the right Class of trademarks. 

Japanese retail company MUJI lost a trademark infringement case against a Beijing-based textile company, named “Beijing Cottonfield”, and was ordered to pay a total of around $60,000.

  • 1999: MUJI files trademark applications for the MUJI Chinese mark “无印良品” in China for Trademark Classes 16, 20, 21, 35, and 41.
  • 2001: Beijing Cottonfield registers the same MUJI Chinese mark “无印良品” for products under Class 24 of the trademark registration classifications.
  • 2005: MUJI begins to expand its global market and enters the Chinese market.
  • 2012: MUJI files an opposition against Beijing Cottonfield’s application in Class 24 but is faced with rejection due to the lack of evidence showing the use of goods under Class 24 in China. 
  • 2015: Beijing Cottonfield sues MUJI for trademark infringement.
  • 2019: The Supreme People’s Court ordered MUJI to issue a public apology and pay a total of around $60,000.

Although the case is limited to the Chinese trademark “无印良品” and only pertains to products in Trademark Class 24 (textiles and textile goods), it highlights the importance of including all necessary and relevant trademark classes in your application as well as a prompt trademark registration –– remember, it is crucial to be the first-to-file. 

Navigating the complex process of registering a trademark can be overwhelming and difficult, but brands have a variety of partner options they can choose from to help make the registration process easier.  An experienced partner can also help you develop a strong registration strategy and ensure you register the right trademark classes for your products and services.  

MarqVision’s trademark registration solution, MARQ Folio, makes it easy and affordable to register trademarks abroad. Our team of in-house experts and our elite global network of top-tier law firms will be there to support you through the entire registration process. To learn more about how MarqVision can help you file your trademarks overseas, visit https://www.marqvision.com/product/marq-folio  

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