How Can I Add a Class to My Trade Mark?
Emily Young
As a business owner, you may have considered registering your trade mark to provide your intellectual property (IP) an extra layer of protection. A key concept that you need to understand is trade mark classes. This article will take you through what you need to know about trade mark classes and whether you can add a class to your trade mark.
Trade Mark Classes
When applying for trade mark registration, you must nominate relevant trade mark classes. These ‘classes’ refer to categories of goods and services under which you will use your trade mark. There are 45 trade mark classes, separated into 34 categories of goods and 11 categories of services.
Trade mark classes allow two similar or identical trade marks to co-exist without infringing on one another. This is possible where the classes and goods/services are completely different. For example, a trade mark for the name ‘Happy Fox’ may be used by both a clothing brand and a medical supply business, as it is unlikely that consumers will confuse these two brands.
Adding Trade Mark Classes
Trade marks are only protected concerning the classes and goods/services covered in your trade mark application. Because of this, it is essential that you carefully consider all trade mark classes your businesses currently fits into and which classes you might one day wish to expand into. While this may seem difficult, particularly for newer businesses with lots of room to grow, it is extremely important. Once you have made a trade mark application, it is only in very limited circumstances that you can increase the scope of your trade mark protection, including adding more classes to your trade mark.
You can apply to amend your application at any stage after making your application. However, there are strict limitations to this. For example, regarding adding a class to your trade mark, you can only do so if you submitted the trade mark classes you included in your application incorrectly due to a clerical error, and the mistake in the classes included is extremely obvious.
If this is the case, you will need to submit a request for the change in writing to IP Australia. This request will require that you provide reasons as to why your request should be granted, and you may be required to make a declaration. In some circumstances, your request for amendments will need to be advertised in the Australian Official Journal of Trade Marks to allow for opposition before being approved.
However, in most circumstances, you will need to file a new trade mark application if you wish to extend the scope of your registration by adding another class or additional goods/services.
Choosing the Right Trade Mark Classes
If you are unsure which classes are most suited to your trade mark, it is helpful to look at similar trade marks of competitor businesses to compare. You can search your competitors’ trade marks on IP Australia’s ATMOSS search tool. However, a trade mark lawyer is the best advisor on the most appropriate classes to select.
For example, McDonald’s has a range of trade marks for their business name and their golden arches. They have trade marks under the following classes and the corresponding goods:
- 14: clocks and watches;
- 16: printed matter;
- 25: shirts, t-shirts and caps;
- 28: games, toys and playthings;
- 29: chicken, fish, french fries, milkshakes;
- 30: hamburgers, cheeseburgers, sandwiches and coffee;
- 31: agricultural products, fresh fruits and vegetables;
- 32: soft drinks;
- 35: technical assistance in the management, establishment, design, construction, equipping and operation of restaurants and take-away food stores; and
- 42: services rendered or associated with restaurants, take-away food stores, and all other retail food outlets which sell and promote prepared food and drink for consumption and the preparation of food.
This means that McDonald’s has the right to use its trade mark regarding the classes and goods/services it registered for.
Key Takeaways
Trade mark classes refer to the 45 categories of goods and services that your trade mark might fit under. IP Australia will only protect your trade mark under the classes and goods/services you select in the trade mark application, making this a critical process. However, it is important to consider that once your trade mark has been registered:
- you cannot increase the scope of your protection after filing. This will require a new trade mark application;
- trade mark classes can only be added if you neglected a class due to an obvious, clerical error; and
- amending your application requires approval from IP Australia.
If you need assistance selecting the best trade mark classes for your business, our experienced trade mark lawyers can help. Give them a call on 1300 657 423 or fill out the form on this page to get in touch.
Frequently Asked Questions
Trade mark classes refer to the different categories of goods and services available for registering your trade mark under. Note that there are 45 different classes to choose from under the Nice classification system.
Once you have filed a trade mark application, it is only in very limited circumstances that you can increase your trade mark protection scope. For example, you can only add more classes to your trade mark if you neglected it in an obvious clerical error. Otherwise, you will have to file a new trade mark application to add more classes.