Trade Mark Classes: When Should I Use a Custom Description?

In Short

• Australia has 45 trade mark classes; each covers specific goods or services.

• Use IP Australia’s picklist to select standard descriptions, but it may not fit all businesses.

• If your product or service isn’t listed, consider a custom description to ensure proper protection.

Tips for Businesses

Before applying for a trade mark, review IP Australia’s picklist to see if your goods or services are covered. If not, work with a trade mark attorney to draft a precise custom description. This ensures your brand is adequately protected and avoids potential conflicts.

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Table of Contents

• The 45 Classes
• The Picklist
• Custom Descriptions
• The International Factor
• Key Takeaways
• Frequently Asked Questions

When registering a trade mark in Australia, a crucial step is specifying the goods and services associated with your mark. This selection defines the scope of your trade mark protection and is a critical decision. IP Australia offers a pre-approved ‘picklist’ of goods and services categorised by class, which can simplify the application process. However, this standard list may not always adequately represent the goods and/or services offered by your business or brand.

There are instances where a custom description of goods and services may be more suitable for your trademark application. This article explores:

1. the coverage and limitations of IP Australia’s picklist; and
2. scenarios where opting for a custom description could better protect your trade mark.

By understanding when to use the standard picklist and when to craft a custom description, you can ensure your trade mark application accurately reflects your business activities and provides the most comprehensive protection for your brand.

The 45 Classes

In Australia, there are 45 classes of goods and services. Each class includes a long list of pre-written specifications of goods or services that fall within the same category. For example, as a law firm, we would protect our trade mark for ‘legal services’. This type of service is covered in Class 45. 

The purpose of the classification system is to allow similar or even identical marks to exist on the register as long as the products are unlikely to be confused in the marketplace. For example, DOVE chocolate and DOVE soap are able to coexist on the register, as the likelihood of confusion between these goods is low. 

The Picklist

IP Australia’s picklist is a pre-approved list of goods and services, some of which align with the international Nice Classification system. This comprehensive list spans all 45 trade mark classes, designed to simplify the classification process and help applicants select appropriate categories. By using the picklist, you can reduce the risk of formal objections during the examination of your application.

However, it is crucial to evaluate whether the picklist adequately represents your business offerings. In some cases, especially for innovative or niche products and services, the standard options may fall short of accurately describing your business activities. This is where custom descriptions become valuable, allowing you to tailor your trade mark application to precisely reflect your unique goods or services.

Custom Descriptions

A custom description refers to a specialised description, not included in the picklist. You or your trade mark attorney or lawyer can draft this description to define your activities. You can use the picklist as a guide when drafting your custom specification. 

Another reason why you may want to use a custom description is to potentially avoid a conflict with a similar trade mark. Limiting your goods or services may allow you to distinguish your mark from a conflicting mark on the register if the limitation is sufficient to remove any overlap. 

Trade Mark Essentials

This guide explains the essentials of trade marks and the steps required to register a trade mark.

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The International Factor

A registered Australian trade mark only has protection in Australia. This means that if you need protection overseas, you will need to file:

• separately in those countries; or 
• a Madrid Protocol international application. 

Australia is unique in that IP Australia allows for broader wording of specifications than many other jurisdictions. This is to such a degree that, often, Australian applicants filing in overseas countries like the United States or Canada receive formality objections on the basis that their list of goods and services are too broad. This can happen even though the specification was accepted in Australia.

This means that if you want to obtain trade mark protection overseas, you might want to consider limiting your specifications for use in your overseas protection at the filing stage.

Key Takeaways

Before filing your trade mark application:

• familiarise yourself with IP Australia’s 45 classes of goods and services;
• use IP Australia’s online search tool to explore specifications within each class; and
• consider the picklist as a helpful starting point for your application.

When drafting your application:

• Assess whether the picklist fully captures your business’s unique offerings;
• If pre-approved descriptions are insufficient, craft a custom description; and
• Ensure your application accurately reflects your business activities.

This approach ensures your application accurately reflects your business activities and provides comprehensive protection for your brand. Remember, precise classification is key to securing effective trade mark protection.

If you need help with your trade mark application, our experienced intellectual property 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