When we want to file and register a trademark, we should decide classification and goods/services thereof.
Let’s look into an example of “cosmetics” in Class 3. If a company’s business includes manufacturing to sales of cosmetics, it is recommended to designate not only Class 3 for cosmetic products but also Class 35 for sales services relating thereof. In the case that the company only files a trademark application in Class 3, there is a risk when a third party tries to register an identical/similar trademark in Class 35 for sales services featuring cosmetics with intentions of taking advantage of the company’s fame. The Korean Intellectual Property Office tends to conduct crosscheck for products and sales service thereof and they usually do not allow registration for identical/similar marks. However, in case the Korean Intellectual Property Office occasionally does not conduct crosscheck, which would lead to registration of that third party’s filing in Class 35.
If a company registered its trademark only in Class 3 for cosmetics and a third party filed an identical/similar trademark in Class 35 for sales services featuring cosmetics, to prevent registration of the third pary’s trademark, the company should either file an information brief to prevent publication of the third party’s mark or wait for the result of the examination and then file an opposition if the third party’s mark is published. In this regard, comparing costs and efforts, filing an information brief and filing an opposition, filing an application for registration is more efficient process. Furthermore, considering that filing an opposition is more expensive than filing an information brief, taking the process for trademark right protection in advance will save an applicant’s time and money.
As a result, rather than considering only prices to be paid for by designating Class 35 services, it would be better to Take into account the extra costs to be involved by not designating Class 35 at the time of filing the trademark application.