Does my company need UK trademark class 40?

[Chris_1990]

Hi everyone!
I have a small company in the UK.
I am attempting to register a UK trademark and am currently considering class 40: Treatment of materials; development, duplicating and printing of photographs; generation of electricity.
I am confused from what I’ve read and am struggling a bit.
It seems to be significant who provides/owns the materials, e.g. the customer (an individual or another company) -or- us, as a company, to then be processed/ transformed/ acted on/ changed/ modified.
Class 40 seems to be needed if the customer provides the materials.
To explain what my company does…
We stock (provide/own) generic/blank goods e.g. trophies, medals, water bottles, backpacks, clothing, shoes (I appreciate that where appropriate, it will be necessary to apply for the corresponding goods trademark classes).
But we mainly do customisation/personalisation (a service): customers select the goods they want, supply us with e.g. their sports team name/logo and we then e.g. laser, engrave, or print it on the goods, for them, exactly as they wish/ according to their design/ specification/ requirements.
So, my company provides/owns the materials, not the customer (until, obviously, the customer buys the finished goods).
My company does not process any materials provided by customers themselves.
So, does my company need UK trademark class 40?
(P.S. I think it does)

I am so confused, I appreciate any response.

Regards, Chris

 

[Paul Kelly ICHYB]

You might have to register in a couple of categories to get full cover.

 

[alamest]

I went through this exact confusion when I registered my trademark because the wording around “treatment of materials” makes it sound broader than it actually is.

From what you’ve described, you’re not taking in customer-owned goods and processing them. You’re buying the blank stock yourself (trophies, bottles, clothing, etc.) and then customising and selling the finished product. In that case, you’re essentially selling finished goods, not providing a materials treatment service to third parties.

Class 40 usually applies where the customer supplies the material and you transform it (e.g. printing on their garments or engraving their supplied items). If you own the goods from start to finish, you’ll more likely need coverage in the relevant goods classes instead.

When I filed mine, I ended up registering across two goods classes rather than adding 40. Have you mapped out exactly which specific product types you want long-term protection for?

 

[Chris_1990]

You might have to register in a couple of categories to get full cover.

thanks mate. I was thinking the same to be honest. multiple goods categories definitely, but just confused about this class 40 business, it's confusing to read.

 

[Chris_1990]

I went through this exact confusion when I registered my trademark because the wording around “treatment of materials” makes it sound broader than it actually is.

From what you’ve described, you’re not taking in customer-owned goods and processing them. You’re buying the blank stock yourself (trophies, bottles, clothing, etc.) and then customising and selling the finished product. In that case, you’re essentially selling finished goods, not providing a materials treatment service to third parties.

Class 40 usually applies where the customer supplies the material and you transform it (e.g. printing on their garments or engraving their supplied items). If you own the goods from start to finish, you’ll more likely need coverage in the relevant goods classes instead.

When I filed mine, I ended up registering across two goods classes rather than adding 40. Have you mapped out exactly which specific product types you want long-term protection for?

thanks a lot for this mate. it's just... I definitely agree multiple goods classes. It's just this class 40, so confusing. I've been asking around.

One AI response, interestingly, included
"you’ve understood the key point: Class 40 is mainly about a service of treating/processing materials (printing, engraving, laser marking, etc.) where the customer is buying the processing service itself. In practice, that often includes situations where the customer supplies the item to be processed — but it’s not a strict “customer must own the materials” rule.

In your setup, customers are buying finished customised goods (you supply the blank items and apply their logo/name). That usually means you should prioritise the goods classes for what you sell (e.g. clothing, bags, drinkware, trophies/medals). If you only file in Class 40 but don’t cover the goods, you can end up with a gap: your mark is protected for “printing/engraving services” but not for “selling branded bottles/clothing/medals”.

Class 40 can still be worth filing if you also market yourselves as a customisation provider (e.g. “we offer engraving/printing services”, “personalisation while you wait”, “trade printing/laser engraving”) or you might later take on third-party items (customer-supplied goods) even occasionally. It’s often a sensible “belt and braces” class for personalisation businesses, but it’s not a substitute for the goods classes.

Practical tip: word the Class 40 spec tightly (e.g. “customisation of goods by laser engraving and printing”) and match it to what you genuinely do.

If you share your main product categories (top 5 sellers),people can point you at the likely goods classes to pair with (or instead of) Class 40."

I'm happy to go for class 40 e.g. to "cover it just in case", but another point is that I don't want to run the risk of being penalised by the trademark office for "non-use", or whatever they call it (which is apparently a real thing too. Yikes!

 

[louis292]

If you’re only selling finished customised goods you own, Class 40 is optional, not essential.

 

[Lucan Unlordly]

I'd be more concerned with copyright for the images etc., that you are asked to put onto products.

 

[fisicx]

What exactly are you tying to protect with this trademark? Are you hoping it will stop someone locally doing the same as you under the same business name?