One Federal Court decision clarifies what is considered as “authorised use” of a trade mark wherein the trade mark user is not the trade mark owner but a subsidiary of the owner’s company.
Classes of goods and services
An application for trade mark registration contains a number of mandatory elements, including, the trade mark owner, the trade mark, and the goods and services. A trade mark can be categorised into 45 international trade mark classes, known as the “Nice Classification”. Classes 1-34 cover goods, whilst Classes 35-45 cover services.
The full list of classes and a non-exhaustive list of inclusions can be found on this page.
Examples of classes of goods and services
Class 1 is a class of goods which mainly includes chemical products for use in industry, science and agriculture, including those which go to the making of products belonging to other classes.
Inclusions (not limited to): sensitized paper; tyre repairing compositions; salt for preserving, other than for foodstuffs; certain additives for use in the food industry, for example, pectin, lecithin, enzymes and chemical preservatives; certain ingredients for use in the manufacture of cosmetics and pharmaceuticals, for example, vitamins, preservatives and antioxidants; certain filtering materials, for example, mineral substances, vegetable substances and ceramic materials in particulate form.
Exclusions include: chemical preparations for medical or veterinary purposes (Cl. 5); -fungicides, herbicides and preparations for destroying vermin (Cl. 5); adhesives for stationery or household purposes (Cl. 16).
Class 35 is a services class that predominantly includes services rendered by parties principally with the object of help in the working or management of a commercial undertaking (retail services for example), or help in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments.
Exclusions include, for example, services such as evaluations and reports of engineers which do not directly refer to the working or management of affairs in a commercial or industrial enterprise.
Broad vs specific trade mark classes
When selecting trade mark classes, all classes that are currently relevant to the business and also future interests should be considered. However, there are considerations such as the cost, as fees for applications are dependent on the number of classes. Further, how broad the claim is will depend on the nature of the trade mark, the nature of the business and your plans and challenges for business expansion. This is something that needs to be considered on a case-by-case basis. Our experienced attorneys can guide you through this process.
Do it right the first time
The correct classes need to be identified when first lodging an application because the scope of the application cannot be broadened after filing.
Certain misconceptions lead to the inclusion of incorrect or unnecessary classes in the trade mark application. For example, a trade mark does not need to incorporate all aspects of its internal business operations, such as advertising, accounting and web hosting. The classes in the trade mark application should be for goods and/or services that the business offers to others.
Incorrect classes may result in delays and unnecessary fees. In the future, incorrect identification of goods/services may result in partial or total removal of the trade mark due to non-use. Worst case scenario, you will not have the scope of protection that your business needs. The advice of a trade mark attorney with extensive experience in identifying the appropriate classes and descriptions of goods/services is invaluable in this step in identifying and securing the correct scope of trade mark registration.