A trade mark application is not a blanket protection allowing you to use your trade mark in relation to all classes of goods and services. Your application needs to select and identify a trade mark class. This is because your unique trade mark rights will attach only to the goods and services associated with your business, and that you have identified on the Register. The Register governs the nature of trade mark infringement. This means that when determining whether there is a trade mark infringement, an important consideration is what goods and services your trade mark covers. Infringement then occurs where somebody uses your trade mark in relation to the class of goods and services under which your trade mark is registered.
How do you register your trade mark in relation to goods and services?
IP Australia registers trade marks under classes of goods and services. The applicable class will be determined by how you use your trade mark and with what you will associate it. There are 45 classes in Australia covering various goods and services.
You will need to identify in your application the classes that you will register your trade mark in and which goods within the classes you will need to cover.
It is critical that you register your trade mark in the correct class. This is because the class you register your trade mark in will have implications when a new trade mark application is being examined. Equally as important is anticipating that you will actually use your trade mark in the particular class you register it in. Failing to choose correctly the relevant class for your trade mark will expose you to having your trade mark removed from the Register for non-use.
The Trade Mark Regulations outline exactly how you must specify the goods and services in your application. Phrases such as “all goods”, “all services”, “all other goods” and “all other services” are expressly prohibited. Vague descriptions like this do not help to determine what goods are being covered, and will not protect a trade mark owner.
The specifications must be clear and unambiguous. It may seem that expressions like “all goods” are going to give a trade mark owner more protection, but trade marking does not work this way. It is not necessarily going to assist you if you ‘cover your bases’ and identify more goods or services than you need.
On the other hand, noting exclusions can also be an issue in specifications. If you exclude certain goods from a class, and they don’t fall under that class, your application may be refused for not having proper specifications.
The success of a trade mark application heavily depends on how you prepare the specifications and classifications.
You must firstly identify the correct classes that you will need to protect your trade mark. Then, you will need to word the particular goods and services within the class to reflect the goods and services your trade mark covers.
Although you can complete a trade mark application without a trademarking lawyer, we encourage you to get some assistance. A trademarking lawyer will be able to identify the classes that you need and how you should prepare your specifications. LegalVision’s trade mark lawyers are well versed with IP Australia’s requirements and are delighted to assist.