The trade mark application process is not always as easy and as straightforward as it may first seem. Intellectual Property (IP) Australia organises trade marks according to 45 different classes of goods or services and a trade mark applicant needs to choose which classes that she or he would like to register. This article outlines the differences between drafting a custom description and choosing from the pick-list for your trade mark application.

45 Classes of Good and Services

The class or classes you choose to register will depend on the goods and services you would like protected by your trade mark. For example, as a law firm, we would like to protect our trade mark under legal services and class 45 covers this. 

It can, at times, be difficult to determine which class is the most appropriate. Once you file your application, it may not be possible for you to expand the list of classes. When determining the appropriate class, it may be helpful to consider: 

  • how you generate income, 
  • the nature of your business, 
  • how you are recognised or identified by consumers, and 
  • the range of goods and services you provide.

The Pick-list

IP Australia expanded the classification system by creating the pick-list. The intention of the pick-list is to assist in simplifying the classification system by offering an extensive list of goods or services that would fall under each of the 45 different classes. Despite the pick-list, the breadth of goods and services that exist may still not be covered. A custom description, then, may be necessary. 

In some cases, choosing from the pick-list may effectively confine your level of protection, particularly because of the generic descriptions that are used. Further, it may be difficult to determine the class that would be most appropriate for you, especially when the classes may overlap and you are unable to find an exact match for your business activity.

Custom Description

Despite the existence of the 45 different classes and the pick-list, IP Australia does not prevent you from registering a trade mark under a custom description. A custom description refers to a specialised description, not included in the pick-list, which is used to define your business. If the pick-list doesn’t cover your business’ activity, or your business’ goods and services, a custom description may then be necessary.

A good trade mark lawyer will draft a custom description in a way that describes the goods or services that you provide, but will still be broadly applicable to other relevant fields. Such careful drafting of your custom description becomes particularly important when you wish to enforce your trade mark against competitors.

Conclusion 

Selecting the right class of goods and services can be tricky enough. You may not know exactly how to describe your business activity or the most relevant classes. You may also need a custom description without even knowing it. At LegalVision, we have extensive experience in processing trade mark applications and drafting custom descriptions where necessary. Speak to one of our specialist trade mark lawyers to determine the best class for your trade mark!

Kristine Biason
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