Navigating the IP Australia Picklist
When applying for a trade mark, applicants must classify their products and services into one or more classes. There are 45 different classes organised according to a system called the Nice classification. Each class contains a category of goods or services. This can be a challenging job, particularly for the inexperienced. Luckily, IP Australia, the federal department that manages trade mark registration, has developed a default list of products and services called the picklist. Using the picklist affords you a cheaper registration process, and the classes it includes are often recognised internationally, meaning that using the picklist correctly can help facilitate an overseas expansion of your trade mark.
If you are about to register a trade mark, this article will provide you with tips for navigating the IP Australia picklist and explain why using the picklist will ultimately benefit your trade mark application.
How to Use the Picklist
IP Australia has created the official goods and services picklist, an electronic tool designed to assist you in identifying the groups of goods or services for your trade mark application. To use the picklist, type in the goods or services that your business provides, and the relevant classes will appear.
The picklist is a feature of the online filing system that can be turned on or off. When you use the picklist to complete your submission, it will automatically identify your products and services so you can file them in the correct category. As a result, your filing fees will be determined automatically, and there will be no classification errors that preclude your trade mark application from being accepted.
It is important to note that other substantive issues may exist with your trade mark even if you file it under the correct class. For example, your trade mark may be too similar to another trade mark. Still, the picklist will significantly help you improve your trade mark application.
These are undeniable benefits, especially for applicants who are filing without the assistance of a trade mark lawyer. However, seeking legal advice is still the best way to ensure a successful trade mark application.
What Happens if I Choose the Wrong Class?
Firstly, IP Australia will only protect trade marks in the class that the applicant registers them under. Therefore, choosing the wrong class can cause your trade mark to lose protection.
In addition, if a trade mark application fails to recognise the relevant class, the trade mark examiner may lodge a formal objection, which will prevent the registration of the trade mark. This will delay the registration of your trade mark, wasting time and money for you and your business. Therefore, it is important to use the picklist to ensure you select the right class for your trade mark.
Typically, you can resolve an objection by amending the application to specify the appropriate class for your goods and services. In rare cases, you may be able to submit evidence to prove that the class you selected originally was correct.
Saving Money With the Picklist
Using the picklist can help save you money on your trade mark application. A regular picklist trade mark application costs $250 per class. Using the picklist, a TM Headstart application costs $330 per class. Applications that do not use the picklist can be more expensive.
Is the Picklist Right for My Application?
Determine if the picklist is a viable choice for your business. Even after adding several groups, you may find that the list does not accurately represent your particular company. This is where custom descriptions come in handy, as they allow you to cover the specific type of product or services you provide. For example, if you sell a novel product or service that does not have an established market, this could be the case, and you may not want to use the picklist.
When navigating the IP Australia picklist, make sure you have an idea of the branding you want to register a trade mark for, and the goods or services that your business provides. This will make it much easier to select the correct trade mark class, which will, in turn, ensure you are protecting your brand. If you have any questions about using the IP Australia picklist, contact our experienced trade mark lawyers on 1300 657 423 or fill out the form on this page.
Frequently Asked Questions
The picklist is an online tool to choose classes before you lodge a trade mark application.
IP Australia may reject your trade mark application if you choose the wrong trade mark class.