Registering a trademark in the correct class for the right industry
Choosing the wrong group can lead to losing protection right from the start, and it cannot be corrected after submitting the application.
Register according to the Nice Classification (45 classes: 1-34 for goods, 35-45 for services), choosing the correct class for what you are currently selling and plan to sell soon. If you both produce and sell or consult, you usually need both goods and services classes. Most importantly: the scope of goods and services cannot be expanded after the application date; if you want to add more, you must submit a new application with a later priority date.
- Pure production, selling through others, only needing a product range.
- producing and selling simultaneously, requiring both goods and services
- has a clear expansion plan, registering broadly in adjacent groups.
- registering too many unused groups, incurring costs and easily getting canceled
- Write descriptions that are too general, easily rejected or have limited protection.
The Nice Classification divides all goods and services worldwide into 45 classes, from classes 1 to 34 for goods and from classes 35 to 45 for services. Your brand is only protected in the exact classes and items of goods and services listed in the application, no more. Choosing the wrong class or missing a class results in losing protection right from the start, which cannot be corrected after submission.
Why can't any group cover each other?
Many brand owners believe that registering a name in one category secures it completely. This is not true. Each category is an independent protection scope. If you register a trademark in the food goods category but not in the food service category, then in principle, another business could use the exact same name to open a restaurant chain without violating your application. This is particularly easy to happen in industries that have both products and accompanying services: food, cosmetics, education, software, fashion.
The way to identify the group that needs to register.
Sinh Vũ advises you to follow three steps before meeting with an industrial property lawyer:
- List everything currently sold and planned to be sold in the next two to three years, specifying details rather than general terms like "food" or "consulting services."
- Clearly distinguish between the goods you produce or sell and the services you provide for clients.
- Search each item in WIPO's Nice classification tool to determine the corresponding group, then have a lawyer confirm and describe it accurately.
This listing step is where Sinh Vũ can contribute: a business activity map and product line expansion roadmap from brand strategy will help lawyers group closely with the actual direction, rather than guessing.
When to need one group, when to need multiple groups.
Goods only: when you solely produce and sell through distributors, without directly providing any services to end users.
Both goods and services: When you are both producing the product and selling, distributing it yourself, having a store, providing consulting services, or offering accompanying digital platforms. This is a common scenario for most small and medium brands in Vietnam.
Registering additional adjacent groups: Reasonable when there is a clear expansion plan and sufficient budget to maintain real usage in that group. Do not register groups just to block competitors if you do not have actual activities.
The scope of goods and services cannot be expanded after the application date. To add a new group, a new application must be submitted with a later priority date.
USPTO, Nice Agreement general remarks; WIPO, Nice Classification
Common errors when choosing groups
- Registering a name in the goods class and then forgetting the accompanying services class, leaving an opening for competitors to enter the growing segment.
- Describing goods or services too generally in the application can lead to rejection by the Intellectual Property Office or limit the scope of protection more than expected.
- Registering multiple classes to "be safe" without actual activity leads to the risk of being requested to cancel the validity due to non-use within the stipulated period.
- Thinking that registering a group blocks all industries, while protection is only effective within the registered group.
The viewpoint of Sinh Vũ
Determining the group and submitting applications is a legal technicality, falling under the scope of industrial property lawyers, not Sinh Vũ. However, the decision on group selection depends on a brand question: where do you see this business heading in the next three to five years?
If you do not have a clear answer to that question, the registration group list will be either lacking or excessive. Sinh Vũ works here: defining the product line and business model clearly enough for the lawyer to group correctly, not by guesswork. Group decisions are a one-way street, so they should be finalized alongside the strategy, not afterward.
Decision checklist
Topic: Which group to register a trademark in for the correct industry. Sinh Vũ guide, sinhvu.com
Select each item you find appropriate, then print or save as PDF to take with you.
If you have marked most of the signs above, this is the time to discuss in more detail. Sinh Vũ can help you review and propose a direction.
References
WIPO, Nice Classification; USPTO, Nice Agreement general remarks; Vietnam Intellectual Property Office (IP Vietnam). Legal content needs to be reviewed by an industrial property lawyer before submission.
Frequently asked questions
I sell packaged coffee and have a coffee shop, how many groups should I register for?
At least two separate groups: a product group for packaged coffee and a service group for café business operations. These two activities fall under different protection scopes according to the Nice Classification, registering one group does not automatically protect the other. Therefore, both should be fully listed and then have an industrial property lawyer confirm the specific group codes.
Can I register multiple classes just to be safe?
Procedurally acceptable, but there are risks: the trademark may be required to cancel its validity in categories that you are not actually using within the specified timeframe. Over-registration incurs maintenance fees and creates obligations to prove use. The principle is to only register categories with actual activities or clear plans and sufficient resources for implementation.
Can I add a group after submitting the application?
No. The scope of goods and services is finalized on the application date and cannot be expanded afterward. If you want to protect a new group, you must submit a completely new application, with a later priority date, which means it is more susceptible to disputes if someone has filed earlier. This is why deciding on the group must align with product line strategy from the start.