Can I Add a Class to My Trade Mark?
Emily Young
Protecting your business’ intellectual property (IP) is a critical step in establishing your business’ brand. Trade mark protection helps define your brand and the direction of your business. With this in mind, you may wonder if you can add a class to your trade mark when registering or maintaining a trade mark. This article will take you through what a trade mark class is, why they are important, and discuss whether you can add a class to your trade mark.
What is a Trade Mark Class?
When registering a trade mark, you will need to choose from a ‘class’ (or ‘category’) of specific goods or services. Internationally, IP offices use the Nice classification to classify goods and services, creating a unified, international system.
There are 45 classes of goods and services under the Nice system. Classes 1 to 34 cover goods, while classes 35 to 45 cover services. You can apply for your trade mark under as many trade mark classes as needed for your business. You can search the Nice trade mark classification system here.
Why is My Trade Mark Class Important?
You must choose the right class of goods or services because registration will protect your trade mark within that selected category of goods or services. IP Australia will not protect your trade mark for goods or services outside your nominated trade mark application.
For example, the brand name ‘Dove’ is trade marked by two separate companies. This is possible because they use the name in two unrelated trade mark classes. One is trade marked under class 3 for products relating to cosmetics, and the other under class 30 for products relating to certain food products. A trade mark protected under class 5 (relating to pharmaceuticals) will not extend to use under trade mark class 9 (computer and scientific devices).
However, it is equally important to consider that you should not add more classes than you think are necessary. To keep your trade mark, you will need to use it within the selected trade mark class or risk losing your trade mark registration. Five years after you register your trade mark, others can apply to have your trade mark removed for non-use if you have not used the trade mark for more than three years.
Additionally, when you register your trade mark, you typically pay a fee per trade mark class. This means that applying for more trade mark classes than you plan on using will be an unnecessary expense.
Can I Add a Class to My Trade Mark?
Once you have registered your trade mark, you will not be able to increase the scope of your trade mark registration. This means that you can remove a class of goods or services from your application, but you will not be able to add to it. This is because adding a class of goods or services will extend the scope of your protection, which may infringe on someone else’s rights. Instead, you will have to file an entirely new trade mark application if you want to increase your trade mark protection scope. This is particularly common if your business starts in one industry before expanding.
There are some exceptions to this rule. For example, if you made a simple clerical error when making your trade mark application, you will likely be able to amend this over the phone if the trade mark is not already registered. This trade mark will need to be approved by the Registrar.
Key Takeaways
Adding a class to your trade mark changes your trade mark protection scope. The only way that you can add a class to your trade mark is if:
- you made a simple clerical error in your trade mark application, and IP Australia has not yet approved your trade mark; or
- you make a new trade mark application under the new class of goods or services.
Selecting the appropriate trade mark classes for your goods and services is essential because it determines your trade mark protection scope. If you require assistance with applying for a trade mark in Australia, contact our experienced trade mark lawyers on 1300 657 423 or by filling out the form on this page.
Frequently Asked Questions
A trade mark is a way that you can distinguish your goods or services from your competitors. Trade marks are an important part of your business’ intellectual property, helping to increase the value of your brand and business overall.
When registering a trade mark, you will need to choose from a ‘class’ (or ‘category’) of specific goods or services. The Nice system lists these 45 classes of good and services. You can apply for your trade mark under as many trade mark classes as needed for your business. However, you must use your trade mark in each class you register under.
You cannot add an additional class to your trade mark. This is because adding a class of goods or services will extend the scope of your protection, which may infringe on someone else’s rights. Instead, you will need to make a new trade mark application if you want to add a class to your trade mark.