Registration of a retail trademark — Specifics of the choice of products and services

Choosing the list of goods and services designated when registering a trademark is a complex process that requires understanding how the Nice Classification works. A bad choice is indeed likely to have an impact that it is not always possible to make up for, years later.

A trademark intended to be used by a brand that markets third party products should not refer to the same products and services as a trademark that markets products under its own name.

Because of the principle of trademark specialty, it is appropriate to register a trademark in the categories of the Nice Classification that correspond to the real activity of the company.

How does trademark classification and the choice of products and services work?

The Nice classification is composed of 45 classes, making it possible to protect the entire range of existing products and services.

In a very simplified manner, the classes available when registering a trademark are separated into two categories:

• The classes referring to products manufactured and marketed, in their own name, under the brand name (classes 1 to 34).
• The classes for services marketed under the trademark (classes 35 to 45).

If products are manufactured and marketed by the trade mark owner under his own name, the products covered by the corresponding classes from 1 to 34 should be protected.

Conversely, if the mark is a service mark, there is no need to protect goods in classes 1 to 34, but only the corresponding services in classes 35 to 45.

It is important not to be satisfied with the wording proposed by the classification and the INPI, and to establish a personalized listing for trademark registration. This will ensure complete and adequate protection of your business. The choice of generic labels may be opposed to you as being too generic and reduce the protection of your brand.

The specific problem of choosing products and services for a trademark intended for the distribution of third party products (“Retail”), in class 35

Retail trademarks are the source of a lot of confusion when it comes to trademark registration.

Applicants who wish to operate in this field are often tempted to protect products in classes 1 to 34 by targeting third party products marketed under their brand. For example, a brand that wants to market third-party clothing will tend to choose class 25.

In reality, class 35 is the most suitable for this activity. Indeed, the sale of products from third parties is considered to be a service.

Consequently, it is necessary to register the trademark by targeting retail sales as well as the list of products marketed within the brand (in our example, “” Retail sale of T-shirts, socks, etc ”).

Moreover, the mere mention of retail sales is not sufficient if it does not specify the list of products sold. This wording would in fact be considered too generic and likely to grant too much protection.

Registering a trademark for products will not properly protect the retail business.

Whatever the type of trademark envisaged, it is in any case preferable to seek advice before ordering a search for precedents from the INPI in irrelevant classes or registering your trademark, in order to have adequate protection. This will save redeposit fees and limit the risk.

We are at your disposal to assist you in the search for prior art and the registration of your trademark. Do not hesitate to contact us.