5 Points to Consider When Selecting a Trade Mark Class
Selecting a trade mark class that best suits the goods and services you wish to protect can be a tricky task. This is especially true considering how extensive the Trade Mark Classification Search is. However, if you bear in mind the following five points outlined in this article, the process of selecting the right trade mark class should appear much simpler and more manageable.
1. Amendments to Your Application
Many trade mark applicants are unaware that once they submit their trade mark application for registration, there are limited opportunities to amend the class of goods and services listed in the application. This is because including additional classes in your application will substantially change the basis upon which IP Australia approved your trade mark rights. For this reason, you should choose all relevant classes from the outset of your application to avoid complications arising down the track.
2. Items Appear in More Than One Class
Class 1 to 34 on the Classification Search cover goods that trade marks can protect, and classes 35 to 45 cover services. However, there are many overlaps between each class. Certain goods and services are likely to appear in more than one class. For example, the word ‘paint’ appears in at least 19 classes.
To avoid leaving out a class that may be relevant to the goods and services that your business offers, you should conduct a comprehensive search of the Classification Search. First, you should clearly identify what goods or services you intend to protect with a trade mark. Then, you should conduct a general search of these goods or services to maximise your search options. Finally, once you have identified an array of classes, you should narrow down those classes to choose which ones best fit the description of your goods or services.
3. Selecting a Class That Is Too General
When selecting a trade mark class, you also run the risk of selecting a class that is too broad and general. Generally, where your application specifies both a broad and specific class, IP Australia is likely to accept the specific class over the broader class. 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.
You should consider which class most accurately fits the description of the goods and services that you wish your trade mark to protect. This will further your chances of having your trade mark class approved by IP Australia. Make sure the class you select applies explicitly to your goods and services.
4. Selecting Too Many Classes
Although some applicants might forget to include certain classes in their trade mark application, some applicants run the risk of including too many classes in the belief that by doing so, their goods and services will gain more comprehensive protection. However, if you select too many classes, the chances are that IP Australia will reject some of them. Choosing too many classes can also unnecessarily raise your trade mark application costs. This is because the fee paid depends on how many classes of goods you apply for in your application ($250 per class).
A common example where people select too many classes is concerning ‘retail services’ under Class 35. These are services provided by a business that directly assist with another business’s operation, management or commercial enterprise. For example, an account providing accounting services would fall under Class 35. However, retailers often ‘double-up’ when selecting Class 35 in their trade mark application. For example, a business owner who manufactures and sells their own clothing might select Class 25 (which protects clothing goods) and Class 35. However, Class 25 already protects the sale of clothing goods, making Class 35 unnecessary to include.
Before selecting a trade mark class, you should consider whether you have listed too many classes in your application. This can save you time and unnecessary costs when IP Australia eventually reviews your application for registration.
5. Seek Legal Advice
If you are uncertain about the trade mark class you have selected in your application, you should seek legal advice. A lawyer with experience in trade mark law can advise you on what classes best fit your goods and services. They can also provide general guidance throughout the application process. Given the investment you are making when registering a trade mark, it is worthwhile ensuring that your application reflects the protection that you intend your trade mark to have.
When selecting a trade mark class, you should consider that:
- once your application is registered, you cannot add additional classes;
- several goods and services appear in more than one class;
- you should avoid selecting trade mark classes that are too broad; and
- it is important not to unnecessarily select too many classes.
Frequently Asked Questions
Whilst there is no minimum requirement for how many classes you should include in your application, you should only include those classes that best suit the description of the goods and services you intend to protect with a trade mark.
The Trade Mark Classification Search is a class system that lists the goods and services available for trade mark protection in Australia.