A registered trade mark is a valuable asset that helps protect the integrity of your brand. Registering a trade mark gives you the exclusive right to use that mark. As part of the registration application process, you’ll need to select the class(es) of goods or services your trade mark belongs to. With 45 different classes available, it can be confusing and difficult to figure out whether you should apply for more than one class. Below we look at the classification process. We also provide some tips when deciding whether to apply for trade mark protection under multiple classes.
Why Is the Classification Selection Important?
Choosing the right classes of goods and services is important because your trade mark will only be protected in relation to those classes. For example, if you trade mark your electrical lighting business name ‘Illuminate’ in relation to Class 9 (Apparatus for Controlling Electricity), you may not be protected if you choose to also launch a furniture line (which falls under Class 20).
Choosing the right class can also mean that you can register a particular trade mark even if it’s somewhat similar to an existing trade mark. For example, you may still be able to register the name ‘Illuminate’ under Class 9, even if there is an existing candle-making business that has a registered trade mark over the same name. This is the case as long as the candle-making business has registered under a different class (e.g. Class 4, Candles), and the similarity in brand name won’t confuse consumers into thinking they are the same brand.
Use the Trade Marks Classification Search on the IP Australia website to identify what classes may be appropriate for you. You can enter key words that best describe the nature of your business, product or service, which are then matched with possible classes.
When Should I Choose More Than One Class?
You should choose more than one class to apply to your trade mark if multiple classes are necessary to properly protect all the goods and services in which your business trades.
When determining what classes are relevant to your trade mark, think about:
- the focus of your business;
- what products or services your business is currently offering; and
- if and how you want to expand your brand over the next few years. If you plan to offer more products and services in the future, you may wish to apply for your trade mark under more than one class to protect your trade mark for expansion.
For example, you may start a business ‘Work It’ which sells corporate wear that you have designed and made. Your business also provides fashion design workshops for emerging designers. In this case, you may register the brand ‘Work It’ as a trade mark under Class 25 (Clothing) as well as Class 41 (Education/Training provision).
If your medium-term plan for ‘Work It’ includes expanding into corporate footwear or accessories, you can include those additional classes in your initial application. This will save you the cost of filing additional trade mark applications down the track. You’ll then have three years to start using your trade mark in relation to each category of goods and services you have registered.
When Should I Avoid Choosing Multiple Classes?
Applying for trade mark protection under multiple classes may not always be appropriate for your situation or business activities. While registering for multiple classes may often be beneficial for additional protection, make sure you don’t overstretch your application.
Avoid registering trade marks in multiple classes simply to stop other traders from using them. If you don’t actively use your trade mark for the classes under which it’s registered within three years, other people can apply to remove your trade mark for non-use. So if you know that you don’t really want to expand ‘Work It’ into corporate footwear, don’t select that class on your application.
You must pay an additional fee for every class under which you register your trade mark, so selecting unnecessary classes increases trade mark application, registration and renewal costs.
Choosing the right classes under which to register your trade mark is an important part of your trade mark registration application. In some cases, you may need to register under more than one class in order to comprehensively protect all areas in your business. Every additional class selection requires an additional fee, so make sure you only choose the classes you need. Ideally, try grouping your business’ services into as few classes as possible, without compromising the breadth of your trade mark protection.
If you would like guidance on how to do this, or what classifications may be appropriate for your trade mark, contact one of LegalVision’s Trade Mark lawyers on 1300 544 755, or fill out the form on this page.
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