3 Tips to Navigate the Trade Mark Classification Search
If you are thinking about applying for a registered trade mark, you should consider what class of goods and services your trade mark will protect. When applying for a trade mark with IP Australia, you must register a trade mark in connection with a particular class of goods or services offered by your business. You can find a list of these classes on the Trade Marks Classification Search, a publicly available database that provides a list of goods and services classes to choose from for your trade mark. To help you navigate the Search, this article outlines three tips to keep in mind when conducting your search.
1. Goods or Services in Multiple Classes
When you enter the database, you will notice that classes 1 to 34 contain goods and classes 35 to 45 contain services. What many people are unaware of is that certain goods and services fall under more than one class. For example, the word ‘cleaning’ appears in at least 16 classes. This is an important point to keep in mind when you eventually apply for a trade mark, since you want to ensure that your trade mark can protect all of your intended goods and services.
You should note that once you submit a trade mark application, you can only amend your application by eliminating certain classes and not by including additional classes. Therefore, if you wish to include additional classes in your application, you will likely have to submit a new application to IP Australia at an additional cost.
You should also note that if you select an item in both a general and specific class in your trade mark application, IP Australia will likely prefer the more specific class over the generic class. For example, the generic term ‘furnaces’, appears in one class and ‘furnaces for laboratory use’ appears in another. This latter term is more specific and is likely to help your application.
2. Conduct Different Types of Searches
Certain goods or services appear in more than one class. Therefore, you should conduct different types of searches to ensure that you identify all desired search results. Firstly, you can search for a full term or a partial term in the search bar. For example, a search containing ‘cleaning service’ will only retrieve results containing the full phrase in its exact order. In contrast, the search ‘cleaning and service’ will retrieve results containing both words in different orders.
You can also separate words with the word ‘or’ to retrieve results that contain the words separated by the word ‘or.’ For example, searching ‘cleaning or service’ will display results containing either one or both of the words searched.
Once you have retrieved your search results, you can further filter these results based on goods or services. This is particularly useful for narrowing down the search results. This may help if you know that you want your trade mark to only protect a certain good offered by your business. By conducting different searches, you can ensure that you cover the field and are not missing out on any classes that may be relevant to your trade mark application.
3. Selecting General Classes
As mentioned above, a more specific class will likely prevail as the correct class over a more general class. Where a class is too broad or general, IP Australia may not accept your trade mark application for its lack of specificity. For example, ‘consulting services’ exist in a general class under class 35. However, different types of consulting services, such as financial, building or travel, are found in different classes.
To further your chances of having your trade mark application approved by IP Australia, you should consider which class most accurately applies to the goods or services that your business offers. Suppose you are ever in doubt about the class or classes you have selected. In that case you should seek out the advice of an expert lawyer.
The Trade Marks Classification Search is an integral part of any trade mark application. Before applying for a registered trademark, you must consider the classes of goods and services listed on the search. Select the ones that most accurately describe the goods and services you wish your trade mark to protect. When searching the Trade Mark Classification Search, you should:
- be aware that certain goods or services can appear in more than one class;
- conduct different searches to retrieve multiple results; and
- be wary of choosing a general class of goods or services when choosing a class in your trade mark application.
Frequently Asked Questions
The cost of a registered trade mark application depends on the type of trade mark you are applying for and the number of classes of goods or services included in the application. You can find a comprehensive breakdown of IP Australia’s application costs here.
The Nice Classification List is an international classification system of goods and services compiled by the World Intellectual Property Organisation (WIPO). The core classes identified in the Nice Classification are necessary to consider when applying for an international trade mark.