When making a trade mark application, do you usually need to include Class 16 to cover use of the mark on promotional leaflets etc?
This Q&A, originally produced for LexisNexis, looks at how an applicant can select the appropriate goods and services when filing a trade mark application in the UK.
The classification system
When filing a trade mark application, an applicant has to select the goods and services for which the trade mark will be protected. Typically, this would be a list of everything in relation to which a trade mark applicant currently uses, or intends to use the trade mark.
Goods and services are divided into categories called “classes”, under the Nice Classification system. Under the Nice Classification system, there are 45 classes of goods and services in total. Classes 1 to 34 contain goods and classes 35 to 45 contain services. Physical copies of promotional leaflets (i.e. paper, rather than digital) are in class 16, which is the class which covers printed matter and stationery.
The UKIPO and EUIPO do not actively check if a trade mark applicant uses its trade mark on all the goods and services it applies for, however:
i) when filing a UK trade mark (this doesn’t apply to EU trade marks) the applicant gives a statement that it has a bona fide intention to use the trade mark on the goods and services it has filed for (TMA 1994, s 32(3)). If this is missing, third parties can raise a challenge and the trade mark can be blocked from registration or cancelled for the goods/services where there is no intention to use the mark; and
ii) both UK and EU trade marks become vulnerable to cancellation if they are not used for a continuous period of five years after registration. The use must cover the territory of registration and be “genuine”, namely to maintain or create a share in the market for the goods or services protected by the mark (Ansul BV v Ajax Brandbeveiliging BV (Case C-40/01)  IP &T 970). The mark can be cancelled for any goods and/or services for which there is no genuine use.
Inclusion of promotional materials in a trade mark application
The starting point is that a trade mark application is to protect an indication of origin, that is, a unique identifier that guarantees the goods and services originate from a particular business.
However, many businesses also use their trade marks on promotional materials such as leaflets, brochures or catalogues. Should the application include these items?
In most cases, the answer is no. A trade mark application should only the goods in which the owner seeks to create or maintain a commercial market for the specified goods. Promotional items constitute use of a trade mark only in relation to items which are being promoted, not the medium itself (see: Silberquelle GmbH v Maselli-Strickmode GmbH (Case C-495/07)).
This can be illustrated in the following possible scenarios:
1. a business prints and sells leaflets for others, or intends to do so.
This trade mark applicant trades, or intends to trade in leaflets. It should therefore include leaflets in its goods;
2. a business has leaflets and brochures printed purely to advertise other goods and services.
This trade mark applicant does not intend to maintain or create a share in the leaflets market but uses leaflets to promote its other goods/services. If its trade mark registration covers class 16, there is a risk that the use of their mark on leaflets would not be genuine use in relation to the class 16 goods, so the mark may become vulnerable to cancellation for non-use 5 years from registration.
In addition, if the applicant had no intention to use in the leaflets market then the registration may be vulnerable to cancellation on the grounds of lack of intention to use and/or bad faith (see Sky plc and other companies v SkyKick UK Ltd and another company  EWHC 155 (Ch) (currently on appeal to the Court of Justice, 4 September 2018));
3. a business does not sell or print leaflets and does not have an intention to do so.
This trade mark applicant does not intend to use its trade mark for leaflets. If its trade mark registration covers class 16 goods it would therefore be immediately vulnerable to challenge in the UK on the basis there is no intention to use the mark for leaflets. Once registered for 5 years, the mark could also be cancelled for non-use (EU or UK trade mark).
In conclusion, it is not necessary to include leaflets in class 16 if the leaflets simply promote other goods/services.
There is nothing to prevent leaflets or promotional items being included in a trade mark application but a UK trade mark could be vulnerable to challenge for those goods if there is no intention to use in relation to those goods or services.
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