Could I register a trademark already registered for other classes?

Question

I am thinking about a trading name but it seems that it is a registered trademark in the UK for the following classes:

• Class 9: Computer software and computer programs for use as web service components of grid computing architecture and the aforesaid goods supplied from the Internet or from an on-line database; electronic downloadable publications relating to the aforesaid goods provided on-line from a computer database or the Internet.
• Class 16: Printed matter; printed publications; paper articles being in the form of reports and manuals; books; periodicals; journals; magazines; manuals; newsletters; instructional and teaching materials (other than apparatus); all the aforesaid relating to computing, computer programming and computer architecture.
• Class 41: Provision of educational, instructional and teaching courses; education and instruction courses provided from a computer network or the Internet; provision of training workshops; conducting, organising and arranging conferences, seminars and exhibitions; library services; provision of education services relating to computer software education provided from a database, computer network or via the Internet; production and rental of instructional materials; providing on-line electronic publications (not downloadable); publication of texts, books, pamphlets, magazines and of electronic books and journals on-line; provision of information, consultancy and advisory services relating to any of the aforesaid services.
• Class 42: Research and development services; technical research; technical research and development services in the fields of computing and computer programming, information and knowledge systems; consultancy and research services in the fields of computing; leasing of access time to computer systems; information services relating to computers, computer programming and computer software; provision of websites relating to any of the aforesaid services; information provided on-line from a computer database or from the Internet relating to any of the aforesaid services; computer programming and computer software services; information, consultancy and advisory services relating to any of the aforesaid services.

My company would only do telecommunications (class 38) and not fall into the aforementioned classes from the other trademark.

Can I register the trademark for my specific class and use it?

Also, while we wouldn't sell the services to the general public, we would obviously do software development in-house for our service, thus clashing with class 9 and possibly class 42. Same with our advertising, which could clash with class 16. Are any of those problematic?

Furthermore, the trademark seems to be registered by an university, and a search on Google yields little relevant results, with only abstract promotional material about some research (which makes little sense as to what actual product they are planning to sell, if any) but no clear product. No official web presence either, only a .org domain that doesn't seem to lead to any active server.

Regards.

Answer 1

You must clearly & precisely indicate in your application what you intend i.e what goods and services within a class you want to operate. People sometimes use class headings only and these are quite broad, so two marks may fall under same class but still operating in different areas.

Classification of marks (Class 9, 14, 11 etc.) is useful for searching trademarks and does not help in defining the boundaries of your rights.

Your rights are determined by the statement/specification of goods or services which is filed along with basic application. Broad statements may receive objection because PTO wants you to narrow down your scope or it may be narrowed down later (revocation, opposition) if "non use" of mark is shown. You'll be also filing a declaration at the time of filing your application which will mention "actual use" or "intended use" of the mark.

Now coming to your question, if "luxor" is already registered for pens, you can't register the same mark for pens. If "luxor" is registered for stationary items and has never sold pens, then also you can't register it for pens because nature, function and purpose of goods will overlap. If "luxor" is registered for educational utilities, you'll have a good chance getting it registered for pens.

The important point is distinction between nature, purpose, function of goods/services and distinction between quality, features of the goods/services.

I think if marks are same but fall in different subcategories or have different characteristics, they will be allowed within same class. Your lawyer would be a better guide in finding if your mark can be considered distinct on the basis of different subcategory/characteristics.