When filing a trade mark application, you must nominate the goods and services you want to cover concerning your trade mark. It is important to nominate the correct goods and services to ensure your trade mark has protection for all of the products and services your brand offers. One way of selecting which goods and services you would like to list is to confer with IP Australia’s ‘pick list’. This article will cover what the pick list is and the benefits of using it when filing your trade mark application.
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What is a Trade Mark?
You may still be gathering your thoughts and deciding whether you will file an application. You might still need clarification on whether you even have a trade mark to protect. Here is a quick refresher to help you.
A trade mark is a sign, symbol or word representing your business and your brand. It distinguishes your goods and services from your competitors and offers intense brand protection.
What Are Classes?
Different goods and services fall into different groups or ‘classes’. The list of goods and services to choose from when filing your trade mark application falls into 45 classes. Moreover, 34 of these classes cover different types of goods, and 11 of these classes cover different types of services.
Continue reading this article below the formWhat is the Pick List, and Why Should I Use It?
IP Australia has formulated a searchable list of over 60 000 pre-approved goods and services and has classified them into the relevant classes. You can access the trade marks classification search on IP Australia’s website and search which classes your goods or services fall under.
There are a few benefits of using the pick list to select your goods and services when filing your trade mark application. Firstly, using the pick list is a helpful way to identify which classes are relevant and best related to the goods and services that you wish to protect under your trade mark. Secondly, using the pick list ensures that IP Australia is unlikely to raise any issues with your specifications.
Another benefit of using the pick list when filing your application online is that you are entitled to a discounted filing fee. For instance, you could receive a $250 discount per class if filed through the standard application process.
Do I Have to Use the Pick List?
You do not have to use the pick list when filing your application. Instead, you can file without the pick list and draft the wording of your goods and services on your own. This might be relevant if the wording of the pick list needs to reflect the goods or services you offer accurately, and you want to avoid ambiguity. However, applying without the pick list will increase the costs of your application from $250 per class to $400 per class when filing through the standard application process.
Can I Select All of the Goods or Services in the Class That Are Relevant to Me?
It is important to carefully consider which goods or services you want to protect under your trade mark. Although it is a good idea to protect all of the goods or services in a specific class, we do not recommend this approach as not all of the goods or services in a class will be relevant to your business.
For example, if you offer software as a service and that is the only service you intend to offer, class 42 will be a relevant class that you should list in your application. In this case, you can select the ‘software as a service (SaaS)’ pre-approved specification from the pick list. This will cover you for exactly the service you are offering. However, class 42 covers other services like ‘architectural services’ and ‘chemical laboratory services’. These services are unlikely to be relevant to your business if you only offer software as a service.
These phrases cannot be selected when filing through the pick list. So, if you use the pick list, you should be able to avoid such wording. However, suppose you were thinking of filing without the pick list and drafting bespoke wording of your specifications. In that case, it is unacceptable to include claims to all items or goods or services in the class.
Technically, nothing is stopping you from selecting all of the goods or services within a class when filing through the pick list. However, this will likely be a time-consuming exercise and leave your registration vulnerable to third-party removal. For instance, this may be the case if you ‘over-claim’ several goods and services you are not using under your trade mark.
Key Takeaways
The pick list is a searchable list of over 60 000 pre-approved goods and services. Failing to protect your trade mark by using the pick list will save you on costs and ensure you are filing in the correct class. However, determining which classes are relevant for your current and future goods and services offered can take time and effort. Therefore, it may be helpful to consult with a lawyer to ensure you are protecting your brand accurately.
If you need advice or have any questions about trade marks, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
IP Australia has formulated a list of over 60 000 pre-approved goods and services that you can choose from when filing to protect your trade mark. This list is called the ‘pick list’ and you can access the database on IP Australia’s website.
The cost of filing through the pick list (through the standard application process) is $250 per class per application.
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