When starting a business, registering a trade mark should be one of your top priorities. You will want to secure your trade mark before launching your product to ensure that it is adequately protected from competitors. When filling out your application, you will need to select which classes of goods or services that your products relate to. However, if you choose to expand your product range in the future, you will need to add more goods or services. This article will explain what to do when you grow your business and need to choose more classes of goods and services for your trade mark.

Case Study: The Country Road Brand

Take the well-known Australian brand, Country Road, as an example. Country Road started as a clothing brand. However, they now sell a wide range of different products like:

  • bags;
  • accessories;
  • jewellery;
  • homewares; and
  • beverages (at one point).

Here is a timeline of the numerous trade marks that the brand registered over the years for the name ‘Country Road’.

Year Classes Description
1977 Class 25. Country Road first registered its name as a trade mark for clothing and all other goods included in class 25, i.e. footwear and headwear.
1981 Class 42. Registered the same trade mark for the retailing and wholesaling of domestic utensils and kitchenware.
2000 Classes 14 and 18. Country Road started selling leather goods, bags, jewellery and children clothing.
2008 Classes 4, 20, 32 and 35. They expanded their product range to include candles, furniture products, beverages and franchising services under the respective classes.
2014 Classes 9, 16, 41 and 42. Country Road expanded again to include eyewear, packaging and weblog services in their product range.

 

Country Road probably didn’t have plans of selling beverages when it first launched its brand in 1977. However, as the brand became successful, it started expanding into different industries. In turn, it had to register new trade marks every time it entered a new market.

Expansion into Similar or Related Trade Mark Classes

Learning from the Country Road brand, you can register the same trade mark in different classes over time. However, this requires you to fill out and submit a new trade mark application form each time. You cannot simply add more classes on to your existing mark. On average, it takes seven months for IP Australia to accept or deny a trade mark application. Therefore, it is essential that you undertake this process as soon as you start making plans to expand your business’ product range.

When you register your trade mark in a particular class, IP Australia may prevent other businesses from registering a similar trade mark within similar or related classes.

For example, class 25 for clothing and class 26 for clothing accessories are considered similar or related classes. Therefore, if you have a registered trade mark under class 25, it is unlikely that a competitor with a similar trade mark would able to register its trade mark under class 26.

Expansion into Different or Unrelated Trade Mark Classes

While it is possible to gradually register your trade mark under similar or related classes over time, expanding into unrelated lines of products carries more risk.

In Country Road’s case, expanding into furniture products carried a risk. This is because there could already have been a brand with a similar name selling furniture. If this were the case, Country Road would have had to either modify its brand to sell furniture or obtain consent from the existing business to co-exist. However, it is likely that Country Road conducted a trade mark search to ensure that their mark would not conflict with any others before they began expanding their product line. 

When your business has solid plans of expanding into unrelated lines of products in the future, it is best that you obtain trade mark protection for these classes as soon as possible. This ensures that your brand will be protected within that industry.

Key Takeaways

When choosing which classes to register your trade mark under, you need to consider your future business plans. If you have solid plans to expand into other product ranges, you should consider registering your trade mark under all of the relevant classes upfront. By not obtaining trade mark protection in all classes that are relevant to your business, you may be hindered from expanding into a particular market. If you have any questions about registering a trade mark, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

Natasha Bahari
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