Addressing Inconsistencies in the Classification of ‘Kits’

Published: March 9, 2022

There is no global consistency when it comes to the classification of “kits” or sets, although products listed in the Nice Classification do include some kits. As a first step in addressing this inconsistency, a task force of INTA members serving on the Trademark Office Practices Committee (TOPC) and the Harmonization of Trademark Law and Practice Committee (HTLPC) analyzed 13 jurisdictions and compiled the WIPO Examination Guidelines Concerning the Classification of Goods and Services in International Applications chart.

According to the Cambridge Dictionary, a “kit” is defined as “a set of things, such as tools or clothes, used for a particular purpose or activity.” The Merriam-Webster dictionary provides for more definitions of the term “kit,” including, “a collection of articles usually for personal use,” “a set of tools or implements,” “a set of parts to be assembled or worked up” and a “packaged collection of related material.”

The chart shows how “kits” are treated in terms of classification in each of the 13 jurisdictions studied, 10 of which are among the top 12 designated jurisdictions: Argentina, Australia, Brazil, Canada, China, the European Union, India, Israel, Japan, Mexico, Switzerland, the United Kingdom, and the United States.

The analysis and chart reveal how the practice (of classifying kits) in the selected jurisdictions is inconsistent. On the one hand, the intellectual property (IP) offices of China, the EU, India, and the United States have adopted a practical approach. They allow registration of kits within the class in which most of the items comprised in the kit are classified, even though some of the items fall within a different class or classes.

On the other hand, the corresponding IP offices—Argentina, Australia, Brazil, Canada, Israel, Japan, Mexico, Switzerland, and the United Kingdom—have adopted a stricter approach to ensure proper coverage. These offices ask applicants to obtain registration in all the classes where the items included in the kits of concern are classified.

While the solution adopted by the former group results is more efficient and cost effective for brand owners and professionals, it has the potential to derive into complex conflicts, where items comprised in a kit under a given mark may be in direct conflict with registrations by third parties for these single items in their correct classes, and vice versa.

Consequently, although the solution adopted by the latter group of IP offices may be somewhat cumbersome for brand professionals, it provides more certainty in the trademark system.

Given this inconsistency among IP offices globally, it is necessary to carefully consider how to correctly classify kits at the time of filing according to each chosen jurisdiction, which results in a relevant concern for filings under the Madrid System. More specifically, the harmonization concerning the classification of “kits” globally would bring more predictability in multinational registration proceedings by avoiding office actions with different outcomes in different jurisdictions.

It is not a given that the practice of the first group of jurisdictions discussed will necessarily evolve in the direction of the second group. The TOPC Madrid System Subcommittee and HTLPC International Classification Subcommittee will work together to advocate for a harmonized, globally adopted solution. They will recommend the solution adopted by the second group of countries, as it provides greater certainty of long-term protection for brand owners. By preventing specific items within a kit from being “misclassified”—which individually may not pertain to the class where the kit was protected—it reduces the possibility of another brand owner’s rights being affected within the class and helps maintain a more orderly trademark system.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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