Mistakes to Avoid When Selecting a Trade Mark Class
Choosing the right class in your trade mark application can be a tricky process. This is especially the case if you are unfamiliar with the different classes available for protection. If you select the wrong trade mark class, the goods and services associated with a trade mark may go unprotected. To avoid this occurring, this article outlines five common mistakes trade mark applicants often make when selecting a trade mark class or classes.
1. Misunderstanding Trade Mark Classes
Many people are unaware that you must register a trade mark connected with a specific class of goods or services. This means that a registered trade mark is only capable of protecting the goods or services that IP Australia has approved in your application. For example, suppose a business sold textiles and carpets but only obtained a registered trade mark concerning selling textiles under class 24. In that case, the trade mark can only protect the textiles sold by the business. If you use a registered trade mark in connection with a good or service that IP Australia has not approved in your application, this could attract great penalties.
2. Items Appear in More Than One Class
Another mistake trade mark applicants often make is not checking the Trade Mark Classification Search properly, especially considering certain goods and services often fall under more than one class. For example, the word ‘clothing’ appears in at least 26 classes on the Search. This is an important consideration to keep in mind to ensure that the class you select actually covers the good or service you intend to protect.
To avoid missing potential classes that could relate to your application, you should conduct a comprehensive search of the Trade Mark Classification Search. This would include conducting a general search using the keywords of your goods or services to retrieve all possible classes. Once you have identified these classes, you can narrow down the classes that specifically apply to your good or service.
3. Forgetting to Include a Class
Once you have submitted your trade mark application for registration, you cannot amend it by expanding the list of classes of goods or services included in your application. Instead, you can only take away certain classes if you wish to amend your application. If you forget to include a class in your application, you will likely have to submit a completely separate trade mark application at an additional fee.
4. Selecting Too Many Classes
Where applicants may forget to include a class, there is also the possibility that applicants select too many classes, believing it will protect their goods and services comprehensively. However, you should be wary of selecting too many classes considering the cost of a trade mark application depends on how many classes of goods you apply for ($250 per class).
A common example of where too many classes are selected is where both goods and service categories are relevant. For example, a business owner who sells clothing might apply for a trade mark connected with class 25, which protects clothing goods. They might then also apply under class 35, concerning retail services. However, class 25 already protects the sale of clothing goods. Therefore, when the business only sells their own clothes, class 25 would likely be adequate for the protection they need. On the other hand, suppose the business owner also sold other outsourced items, such as shoes from another brand. Then, they should also seek protection under class 35.
Before you select your trade mark classes in your application, you should identify what goods or services you need to protect and then choose the class that best represents these goods or services.
5. Selecting a General Class
Another common mistake applicants make is choosing a general class of goods or services where a more specific class would better fit the description of their goods or services. For example, class 35 covers ‘consulting services’ as a general class of services. However, there is a range of different types of consulting services. These are much more specific and exist in different classes, such as financial, building or travel services.
IP Australia will generally prefer a more specific class over a more general class of goods or services. Therefore, if a class that you have selected is too broad concerning the goods and services you wish to protect, IP Australia may not accept your application for its lack of specificity.
When selecting a trade mark class in your trade mark application, you should identify what goods and services you wish to protect and which classes most accurately fit the description of these goods and services. You should also note that certain goods and services exist in more than one class. Also, take note that once you submit your application, you cannot amend it by including additional classes. If you need help with 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 Australian Trade Mark Search is a public registry that lists all of the trade mark applications that IP Australia has approved or rejected. You can use this search to find out the details of existing research trade marks. On the other hand, the Trade Mark Classification Search is merely a class system that lists the goods and services that are available for trade mark protection. You will use this search when selecting the class of goods and services in your trade mark application.
You can think of the Nice Classification list as the international equivalent of the Australian Trade Mark Classification Search. Both are class systems that list goods and services available for trade mark protection. The Trade Mark Classification Search pertains to registered trade marks within Australia. The Nice Classification pertains to classes of goods and services that international trade marks protect under the Nice Agreement.