Should I Only Include One Trade Mark Class In My Application?
George Raptis
Selecting the appropriate class of goods and services is crucial to gaining adequate protection of your intellectual property. For instance, a registered trade mark only protects some goods and services. However, trade mark protection will only apply to those goods and services you registered it in connection with. Ultimately, whether you include one or more trade mark classes will depend on the nature of your business and the goods and services it offers. This article will explore what a trade mark class is and how to go about including them in your trade mark registration application.
What Are Trade Mark Classes?
The Trade Marks Classification Search can help you select a range of goods and services to include in your trade mark application. These goods and services are divided into 45 classes, where:
- goods are covered in classes 1 to 34; and
- services are covered in classes 35 to 45.
To decide what class or classes you should include in your application, you should consider the nature of your business. For example, you might consider:
- which goods and services your customers associate your business with;
- what goods or services does your business provides; and
- do these goods and services generate most of your business’ income.
By answering these questions, you can decide whether one or more trade mark classes are necessary to protect your business’ brand.
Goods and Services Can Appear in More Than One Class
Once you enter your business’ goods and services on the Search, you may discover that your goods and services fall in more than one class. For example, the word ‘paint’ appears in at least 19 classes.
To make sure you have a trade mark class that could be relevant to the goods and services your business offers, you should conduct a general search of these goods or services to maximise your search options. Once you have identified potentially relevant classes, you should narrow down those classes to choose which ones best fit the description of your goods or services.
Selecting Too Many Classes
Some trade mark applicants believe that the more classes they include in their application, the more comprehensive protection they will gain. However, it would help if you resisted the urge to include all classes. This is because including too many classes can be:
- costly, since the fees for filing a trade mark application depend on how many classes you include (i.e. $250 or $330 per class); and
- detrimental to the outcome of your application since you increase the risk of applying for a trade mark that is similar or identical to an existing registered trade mark.
A typical example where applicants choose too many classes is where both classes of goods and services are relevant. Say you run a boutique clothing store. In your trade mark application, you might include class 25, which protects clothing goods and class 35, which covers retail services. However, class 25 already protects the sale of clothing goods. Therefore, class 25 alone would be adequate for the protection they need. Alternatively, say your business sold outsourced items, such as shoes from another brand. In this instance, you may then need protection under class 35.
In any event, you want to ensure that the class or classes you include in your trade mark application are relevant and necessary to protect your business’ intellectual property.
Selecting A Class That is Too General
You might also risk selecting a class that is too general. If you include both broad and specific classes in your trade mark application, IP Australia will likely accept the specific class over the broader one. For example, class 35 is a general class that includes ‘consulting services.’ However, more specific consulting services, such as financial, travel or building services, exist in various other classes.
In any event, including classes that most accurately fit the description of the goods and services you want your trade mark to protect will further your chances of IP Australia approving your application.
Amending Your Application
Many trade mark applicants need to be made aware that once they submit their registration application, they cannot include additional classes that they may have overlooked or forgotten to include. If that is the case, the applicant will likely have to file a whole new application with IP Australia. For this reason, you must seek legal advice before filing your application to ensure you include the class or classes that are relevant to protect your business.
Key Takeaways
Whether you include one or more trade mark classes will depend on the nature of your business and the goods and services it offers. When deciding what class or classes to include in your application, you should keep in mind that:
- goods and services can appear in more than one trade mark class;
- selecting too many classes can be costly and minimise your chances of IP Australia registering your trade mark;
- specific classes are better than including general classes; and
- once you file your application, you cannot amend it to include any classes you overlooked or forgot to include.
If you need help selecting a trade mark class, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
The Trade Mark Classification Search is a class system that lists common goods and services available for trade mark protection.
This depends on the nature of your business and the goods and services it provides. Ultimately, you should only include the classes necessary to protect your business’ brand.