How Do I Add More Goods and Services To a Trade Mark After Registration?
Emily Young
Suppose you have gone through the trade mark application process and registered your trade mark. Over time, you might consider expanding your business into new markets or offering new goods and services. In this case, you will need to consider what this means for your registered trade marks. Unfortunately, expanding the scope of your trade mark protection over time is not always a straightforward process. To help you better understand your options to expand the scope of your trade mark protection, this article will explain how you can add new classes to your trade mark after registration.
What are Trade Mark Classes?
Trade mark classes refer to a classification system used for trade mark applications. When applying for trade mark registration, you are required to select what classes you will use your trade mark for. There are 45 classes available for registration, divided into 34 classes for goods and 11 for services. You can find these classifications in the Nice classification system.
Trade mark classes serve as a mechanism to help trade mark examiners determine if two trade marks conflict. This is because two trade marks can be similar if used under different trade mark classifications.
Can I Add More Classes?
The key purpose of trade mark classes is to define your scope of protection. This means it is not possible to add classes to your trade mark registration. This would expand the scope of your protection without going through the formal process, which would be unfair to your competitors. Therefore, it is critical to consider the most appropriate trade mark classes when making your trade mark application.
However, it is possible to narrow the scope of your trade mark protection by reducing the number of applicable trade mark classes. This will naturally occur over time as you define the purpose of your business and your plans for its future. Having fewer trade mark classes also has the added benefit of reducing the cost of your trade mark renewals.
How to Add More Classes
If you want to add more classes to your trade mark registration, you will need to make an entirely new trade mark application. This will act as an entirely new trade mark, meaning it will have its own filing date and unique trade mark number. While this will potentially be a long and expensive process, it is ultimately a better option than leaving your trade mark unprotected and therefore vulnerable to misuse.
Tips for Adding More Classes
When deciding if you should add more goods or services to your trade mark after registration, there are a few things you should consider. Three tips to keep in mind are:
Conduct a Trade Mark Search
Before filing a new trade mark application for your classes, you should check whether your trade mark is available for use under the proposed goods and services classes. For example, your trade mark may already be in use by another business in connection with different goods and services classes, which will make the trade mark unavailable for your use.
Consider Your Filing Date
A new trade mark application for new goods and services classes will result in a new filing date. It is important to consider that your trade mark rights will not date back, and you will not be able to rely on your initial trade mark application in any court proceedings. This might impact your decision to apply for a new trade mark.
Consider Your Existing Trade Mark
When applying for a new trade mark to add new classes to your registration, you should evaluate your existing trade marks. An evaluation may include cancelling your current trade mark or reducing its scope. If your trade mark is no longer relevant to your business and you cannot benefit from it, you might be better off without the registration.
Key Takeaways
Trade mark classes are a critical component of your trade mark application and the subsequent use of your registered trade mark. However, you should be aware that you:
- cannot add new classes to your trade mark after registration; and
- will need to make a new trade mark application if you wish to add more goods and services to your registered trade mark.
If you need assistance making a new trade mark application, our experienced trade mark lawyers can help. You can get in touch with them by calling 1300 657 423.
Frequently Asked Questions
Trade mark classes refer to a classification system used for trade mark applications. When applying for trade mark registration, you must select what classes you will use your trade mark in. There are 45 classes available for registration, divided into 34 classes for goods and 11 for services.
The key purpose of trade mark classes is to define your scope of protection. This means it is not possible to add classes to your trade mark registration, as it would be unfair to your competitors. If you want to add more classes to your trade mark registration, you will need to make an entirely new trade mark application.