3 Tips for Identifying Your Goods and Services in a Trade Mark Application

Emily Young

• 4 August 2021
• 31 August 2021
• 5 min read

Determining the goods and services for use in your trade mark application is perhaps one of the most critical steps. The trade mark classes you select will determine the scope of your trade mark protection. Failure to register your trade mark under too many or too few classes may have negative consequences.

To help you better understand this crucial step, this article will take you through three tips for identifying your goods and services for your trade mark application.

1. Understand Trade Mark Classes

The first step to identifying your goods and services in a trade mark application is to know what trade mark classes are. When applying for trade mark registration, the application will require you to select the ‘classes’ or ‘categories’ under which you intend to use your trade mark.

In most countries, the internationally recognised Nice classification system classifies trade marks. This classification system breaks down trade marks into 34 classes of goods and 11 classes of services.

You cannot overlook the importance of selecting all relevant trade mark classes. Trade mark classes will define your scope of trade mark protection. Failure to select the appropriate classes will leave your trade mark without protection. 

Once you have submitted your trade mark application, you will not be able to add additional classes to your application without making an entirely new application. 

2. Conduct a Search

The World Intellectual Property Organisation (WIPO) provides a useful search tool for the Nice classification system. As well as being able to browse the classes more generally, you can also type in the name of your goods or service to find the most applicable trade mark classes. 

For example, consider you are trade marking goods for pets. By searching the word ‘pet’, a range of potential trade mark classes opens up. This includes trade mark class 5 for dietetic foods for pets and class 44 for veterinary services. Each trade mark class provides an explanatory note of each trade mark class’s key inclusions and exclusions. 

While it is important to add as many classes to your trade mark as appropriate, it is important you do not add unnecessary classes. This is because you must use your trade mark in each nominated category or risk losing your trade mark due to non-use. It is also important to consider that you pay for each trade mark class when making your application. Furthermore, you must pay your renewal fees. Because of this, having too many trade mark classes may result in unnecessary expenses.

You can use the WIPO’s Nice classification search tool to help you.

3. Look to Competitors

Another useful way to decide the most appropriate trade mark classes is to look to competitor businesses. You can search for trade marks of competitor businesses using IP Australia’s ATMOSS search tool. By finding trade marks for similar products to yours, you can better understand what classes to consider.

The notion of ‘coordinated’ classes is also important here. You can consider certain trade mark classes to be ‘coordinated’ when the trade marks under a certain class overlap with other classes. For example, trade marks that people have registered under trade mark class 29 (for meat and processed foods) are often also registered under trade mark class 30 (coffee, flour and rice) and trade mark class 31 (grains and agricultural products).

By browsing similar businesses to yours, it will be easier to identify coordinated trade mark classes.

Key Takeaways

Your trade mark protection extends only to the goods and services that you have nominated in your trade mark application. To ensure you get the best protection for your trade mark, you must be diligent when selecting your trade mark applications. Some key tips for identifying your goods and services include:

• understanding the purpose of trade mark classes;
• searching the Nice classification system guide; and
• looking to competitor businesses.

If you need help choosing the most relevant trade mark class for your goods or require assistance with your trade mark application more generally, our experienced IP lawyers can help. You can contact them on 1300 657 423 or by filling out the form on this page.

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