4 Tips for Australian Businesses to Understand Trade Mark Classes
Emily Young
Your intellectual property (IP) is the most important part of your business. IP is the foundation of your business’ brand, making it essential that you protect it adequately. Trade mark protection is a great way to protect your business’ IP. However, there are several key elements of trade marks that you must understand. This includes trade mark classes, which are a critical component of your trade mark application. To help you better navigate the trade mark registration process, this article will take you through four key tips Australian businesses should consider to understand trade mark classes better.
1. Know What a Trade Mark Class Is
When you apply to register a trade mark, you will need to nominate which category, or ‘class’, you will use your trade mark in. You can apply for a trade mark under more than one class. However, it is important to note that you typically pay for registration per trade mark class, making it important to only select the most suitable trade mark class for your needs.
These classes are organised in an internationally recognised trade mark classification known as the Nice classification. There are 45 classes you can choose from, broken down into 34 goods and 11 services. You can search these 45 classes using the Nice classification search system here.
2. Consider Why Trade Mark Classes are Important
The trade mark class you choose is important because IP Australia will only protect your trade mark under the goods and services classes you have chosen. Trade mark classes act as a mechanism to help the trade mark examiner decide if two trade marks conflict. For example, if you are applying for a trade mark for a juice product, and a household appliance business has a similar trade mark name, it is unlikely that the two trade marks will be considered conflicting, and both trade marks can exist simultaneously.
It is also important to consider that once you have made your trade mark application, you will not be able to increase its scope of protection. This means that you will not be able to add an additional trade mark class to your application – instead, you will have to make an entirely new application. This makes it even more important to carefully consider which trade mark classes your goods or service belongs to.
3. Use Your Trade Mark
When you have a trade mark, you must use your trade mark or risk losing it. If your trade mark has been registered for more than five years and you have not used it for three consecutive years in that time, others will be able to apply to have your trade mark removed from the trade mark register.
When choosing trade mark classes, you must consider this rule and avoid adding more trade mark classes to your application than necessary. Avoiding unnecessary trade mark classes will also keep your trade mark renewal fees lower.
4. Understand How Trade Mark Classes Work
Understanding how trade mark classes work can help make navigating the trade mark process easier. If you are struggling to decide which trade mark class your product will fall into, consider looking at the trade marks of your competitors to determine how to protect your trade mark comprehensively. You can search your competitors’ trade marks using the Australian trade mark search tool ATMOSS.
For example, American footwear company UGG has trade marks in Australia for more than just footwear (class 25). UGG also registered their trade mark for use under classes such as eyeglasses and sunglasses (class 9) and rugs (class 27). This means that even if UGG does not currently sell these products, they will be able to use their brand on such products in the future without risking infringing on someone else’s trade mark.
Key Takeaways
Trade mark classes are an important component of the trade mark registration process. Some essential tips for Australian businesses to understand trade mark classes include:
- know what a trade mark class is;
- understand why trade mark classes are important; and
- use your trade mark.
Choosing the right trade mark classes determines the scope of your trade mark protection. Furthermore, it is difficult to add an additional trade mark class to your application once your trade mark is already registered, making it critical to choose the right trade mark class for your business at the beginning of the trade mark process. If you need help choosing the right trade mark class for your business, get in touch with our experienced trade mark lawyers. You can contact them on 1300 657 423 or by filling out the form on this page.
Frequently Asked Questions
A trade mark is an important part of your business’ intellectual property (IP). A trade mark helps protect your brand from competitors, giving you exclusive rights to the use of your trade mark within a specified class of goods or services.
Trade mark ‘classes’ refers to the categories of goods and services available for registering your trade mark. There are 45 classes of goods and services, per the internationally recognised Nice trade mark class classification system.