Describing Your Goods or Services in a Trade Mark Application
You might be thinking that trade mark registration is a daunting process. At first glance, it may seem this way. However, knowing what is required in each part of your application can make the whole process much less challenging. When describing your goods and services in your application, consider the following points:
- using clear and accurate descriptions;
- identifying applicable trade mark classes; and
- engaging a trade mark attorney.
By bearing these considerations in mind, you can be assured you have submitted an application that is in excellent shape for IP Australia’s review.
Application for a Registered Trade Mark
As a trade mark owner, you enjoy the exclusive rights to use, licence and sell your mark concerning your business’ goods and services. To obtain a registered trade mark, you must complete the registration process specified by IP Australia. This principally involves you filing a standard trade mark application where you must generally include:
- your personal information;
- a description of your trade mark, like your business’ name, logo or distinctive slogan;
- the class of goods and services your trade mark will protect; and
- a description of your business’ goods and services.
Once IP Australia approves your application, your trade mark benefits from 10 years of protection under the Trade Marks Act. It is important to note that once you submit your application for IP Australia’s review, your ability to make amendments is fairly limited. To avoid having to reapply for a trade mark at an additional cost, ensure that your application comprehensively details your business’ goods and services. The following points can help you achieve this.
1. Use Clear and Accurate Descriptions
Your trade mark application is not the place to describe your goods and services in a superfluous way as you would when marketing your business. Rather, you should describe your goods and services in layperson’s terms to communicate their essential purpose and functionality.
Before writing your application, list the goods and services your business offers. You might feel the urge to include everything your business offers, including any of its potential future products. Perhaps you hope that the more information you provide IP Australia, the more comprehensive your trade mark protection will be. However, this is not the case. Importantly, you should identify your business’ essential products and include only those in your application. Doing so will help you accurately reflect your business in your application and, eventually, provide tailored protection.
2. Consider Applicable Trade Mark Classes
Once you have described your goods and services in your application, you must also choose which trade mark classes they fall under. The Trade Mark Classification Search is a class system that orders common goods and services trade marks have been registered in connection with. Often, goods and services will fall into more than one class. For example, a business that sells ‘candles’ would have around 11 trade mark classes to consider.
To ensure that you identify and include the most suitable classes in your trade mark application, you should conduct a comprehensive search. This typically involves entering the keywords of your products and services into the Classification Search. Likewise, you must identify which classes relate to your business. You can also use the Trade Mark Assist Tool. This program, developed by IP Australia, assists applicants with identifying the correct trade mark class in their application.
3. Consider Working With a Trade Mark Attorney
Trade mark attorneys are specialised lawyers who have depth of experience when it comes to trade mark registration. They can advise you on how your trade mark can protect the goods and services in your business. Additionally, they can help you tailor your application to your business, ensuring that the goods and services your business offers are properly reflected in your application.
A trade mark attorney can also help you avoid any potential issues that might arise in your application before you submit it to IP Australia. In a similar vein, they can also alert you to any trade mark classes that you should include in your application. This way you can avoid applying for a trade mark that is incapable of protecting your business.
When describing your business’ goods and services in your trade mark application, you should:
- use clear and accurate words that describe the essence of your goods and services;
- consider which trade mark classes your goods and services fall under; and
- consult a trade mark attorney to help guide you through the application process.
Frequently Asked Questions
One of the biggest benefits to being a registered trade mark owner is if someone commits trade mark infringement, you have the legal means to stop them. Trade mark infringement arises when another person uses an identical or similar trade mark to your own, concerning similar goods and services. By enforcing your trade mark rights, you can ensure that no one copies or misuses your mark without your permission.
A common law trade mark is an unregistered trade mark that has gained a sufficient reputation in the market. Unlike a registered trade mark which IP Australia approves, an unregistered trade mark requires further evidentiary proof of its existence if a trade mark dispute were to arise.