How to choose areas of brand protection for your IT product

Core classes that IT needs

TM can be registered in one or several classes, depending on what goods or services the company provides or will provide.

There are several classes of Nice Classification that are most relevant to the IT industry:

🔹 9th class of goods. The only class of goods directly related to IT technologies. It includes computer software, hardware, and other technology-related products.

🔹 42nd class of services. It covers any computer and technology services from website or server hosting services to computer system design.

It is important to choose as many positions as possible in the 9th and 42nd classes from those relevant to the goods and services that the company provides and may provide in the future under the registered TM. However, some positions should be added only if they directly relate to the company’s field of activity. Yes, if the company’s products or services relate to downloadable software as a medical device [SaMD] in Class 9.

🔹 Class 35. Although it is not directly related to IT like 9 or 42 classes, it can also be classified as a core class relevant to IT. After all, class 35 contains such important services that can be adapted and provided by an IT company: business management and consulting services related to the use of technology, advertising, business data analysis, retailing and wholesaling of goods of class 9, etc.

Additional classes

Depending on the specifics of the IT product for which the TM is registered, you can choose additional classes. Example:

🔹 Classes 38 and 45 for the development and provision of services of portals for dating and social networks, and messengers. So, class 38 of services includes the provision of communication in Internet chats, the transmission of messages and images using a computer, digital files of podcasts, and streaming of data. Class 45 includes social networking services and dating services. As an example, TM Instagram (Certificate No. 228659) is registered in these classes.

🔹 Class 41 is necessary for many IT products, as it covers a variety of services in the field of entertainment and education. For example, this class will be useful for developers of online games and streaming services, as it includes items such as game services provided online via a computer network, providing non-downloadable musical works online, and others. In addition, developers of educational applications and programs can also use Class 41 when registering a TM in the provision of educational services and online learning.

🔹 Class 36 will be needed for Internet or mobile banking service providers. It includes such positions as banking services, remote banking, and electronic funds transfer. Yes, monobank, which provides mobile banking services, registered its TM (certificate No. 243849), specifying this class during registration.

Conclusions

TM is an important part of individualizing and protecting a business’s intellectual property and is critical to its long-term success.

It gives a company the exclusive right to use a particular mark in connection with the goods it manufactures or the services it offers. In addition, a registered TM gives a company the right to prevent others from using similar designations that may cause confusion in the market.

During registration, it is important not only to choose a unique TM name or logo but also to choose classes and positions of the Nice Classification. Classes 9 and 42 are definitely suitable for applying for trademark registration for services related to software or IT products or services. Also, you can choose additional classes, depending on the specifics of the company’s work.

We recommend that you consult with an attorney to determine the appropriate classes for your TM application and ensure that your TM is fully protected.

Published by DOU

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