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A trade mark is a sign used to distinguish one trader’s goods and services from those of other traders. Almost anything can have a registered trade mark including, letters, numbers, words, business names, phrases, sounds, scents, shapes, logos, pictures and even product packaging. Registering a trade mark is beneficial because it gives the owner a legally enforceable right to commercially use, sell and or assign the trade mark to others. Furthermore, it gives the owner the right to prevent others from using the same mark or a similar mark in relation to similar goods and/or services.

When a trade mark application is filed, the applicant must choose trade mark classes of goods and/or services under which the mark is to be registered. There are forty-five (45) classes to choose from. Classes one to thirty-four (1 – 34) cover goods, while classes thirty-five to forty-five (35 – 45) cover services.

Australian Trade Mark Process

Choose Correctly the First Time

Choosing the right class(es) is crucial! If you don’t select the appropriate trade mark classes, you may not have adequate protection. Once a trade mark application is submitted and approved, the goods and services description can no longer be modified. If you wish to obtain coverage in additional trade mark classes or for additional items in a registered class, a new trade mark application will need to be submitted.

Be Broad and Specific

When choosing trade mark classes of goods and/services the aim is to choose categories that are broad enough to allow your business to grow but narrow enough to allow you to enforce your trade mark. If your goods and/or services specification is too broad, you are potentially exposing yourself to a claim for non-use by third parties.

Towards this end, it may be helpful to consider:

  1. the current focus of your business;
  2. your output (that is the goods/services that you provide); and
  3. the expansion potential of your business over the next three years. Why three years? A non-use action will be capable of being substantiated if you have not used your trade mark in relation to your claimed goods and/or services for at least three years.

Common Mistake #1: Applying for Retailing Services in Class Thirty-Five (35)

As a manufacturer of goods, it is natural that you will also be selling the products that you make. You do not necessarily need to apply under class thirty-five (35) for retail services.

A trade mark application should only be submitted under the retail services category if you are planning on opening up shop and selling other people’s goods in addition to your own.

Common Mistake #2: Applying for Internal Business Functions

By the same token, when submitting a trade mark application you don’t need to claim for internal business operations. If you are merely providing a service such as retailing, maintenance and repair, advisory and consultancy services, you don’t need to apply for:

  • the manufacture of the materials you use/sell; or
  • necessary business operations and administrative functions.

Conclusion

Do you need assistance in applying for a trade mark, choosing trade mark classes of goods and services, or would you simply like to know more about the options available to you regarding the same? Our team of experienced LegalVision lawyers would be happy to assist you with any queries that you may have. Contact us today to see how our IP lawyers can help.

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