The real estate company is interested in the prospect of a broader registration of its trademark.
The question concerned the choice of classes of goods and services for the registration of a trademark in the name of a company engaged in the sale and management of real estate. As is known, services related to real estate transactions belong to the 36th class of the International Classification of Goods and Services for Registration of Marks (ICGS). The General Counsel was interested in the possibility of a trademark registration for services not related to the main profile of their activities, but only being concomitant. And these concomitant services are provided not by the company itself, but by its business partners.
Answer: The question of choosing goods and services of a trademark registration is very significant, since the scope of legal protection of the current and future business of the copy right holder depends on it.
Since a trademark is valid for 10 years and its validity can be extended repeatedly for the next 10-year period, it is possible to register the mark not only in relation to goods produced and services currently provided, but also in relation to so-called "future" goods and services. However, this must be done thoughtfully. The fact is that there should be a measure in everything, including legal protection. An extension, including a legal one, must be related to the main product or service. At the same time, it should not be forgotten that if a trademark is not used continuously for 3 years after its registration at the request of an interested person (for example, a competitor), the trademark registration may be terminated prematurely in whole or in part in relation to certain goods or services due to its non-use.
Since the activity of a real estate company is also connected with the analysis and study of the real estate market, with the management of real estate sales, it was recommended that the company apply for services of class 36, as well as for these services of class 35 of the ICGS.
At the same time, the activities of the partners of the real estate company are related to the services of class 35 in business management and advertising, with class 37 services related to the construction, reconstruction and repair of buildings and structures, as well as class 42 related to the design of buildings, shopping centers, industrial design, planning and design of settlements, engineering services related to construction technology. This means that the registration of a trademark in relation to concomitant services of partners leads the real estate company to the possibility of concluding license agreements with business partners for their use of the realtor's trademark in relation to these services.
