Within the space of intellectual property, there is a multitude of options available to the public wishing to file trademark applications. So, when filing a trademark application, it is important to evaluate and think about the goods and/or services you need to protect and if you are sufficiently protected under the classes you select.
A comprehensive classification of 45 classes was devised by The International Bureau of Intellectual Property separating goods into classes 1-34 are services into classes 35-45. You will be required to select a class from this list when you file a trademark application in Australia and determine what class best describes the goods or services you are currently offering and also what you intend to offer in the future. Mark My Words Trademarks Services is able to offer you expert advice to make sure you get the right protection.
Why would you need to file in more than one class?
You can view a list of the classes and types for Australian trademark filing online.Many people file under just one class and while it appears as simple as one listing, it really may not be offering you sufficient protection and may not cover you for everything that falls within that particular class.
An illustration of this would be if you had a clothing range distributed in a retail store. Goods class 25 will offer you protection because you manufacture the clothing and it would be wise to also list this under class 35 to provide you with protection cover in retail services. One of the primary reasons for a trademark registration is to prevent others from using a trademark related to your specific goods and services, so you do not want to limit your own offerings.
What about International applications?
If you intend on filing an international trademark application, you will use the class system also known as the Nice Classification. This system is used by 85 countries (states) around the world which means you will be able to obtain trademark protection in the same class(es) but may be subject to additional rules and regulations of that member country.
A trademark can be a key asset of your business which is why you will want to legally protect it properly both locally and internationally.
There are three type of applications- Which one do I file?
- Head Start Pre-Application Services
The benefits of filing through the Head Start service is the examination time. This is a pre-application service, essentially a fast track service which realizes a response within 5 business days of submitting your request. You do not achieve registration from the assessment they only asses your application to ensure you meet the requirements for acceptance for registration under the Trade Marks Act 1995 and you benefit from an opportunity to make early changes if any issue arises. If no objections are raised after the preliminary examination, you can proceed so that your application is officially filed and published on the register of trademarks.
There are some trademarks that are excluded from TM Head Start (pre-application service) and submissions are only permitted through a standard trademark application. They are:
o series trademarks or divisional applications
o non-traditional trademarks and special kinds of signs
o certification trademarks or defensive trademarks
This service automatically lets you know the correct class(es) that your product or service falls into as it allows you to search for your product or service and then allocates the correct class(es) for you, saving IP Australia time in evaluating your application as they know the correct class(es) have been automatically selected.
This service allows you to allocate your own classes. While this application attracts higher application fees, you might decide to choose this option because you have a unique product or service that is not defined on the ‘pick-list’, or, you are aware of possible conflicting marks but wish to avoid those by ensuring there is no overlap in the description of your goods and/or services.
If you have filed your own Headstart application and encounter any challenges, feel free to call one of our friendly team at Mark My Words Trademark Services. We would be happy to see how we can assist in overcoming the objections and advise on the best way forward.
Mark My Words Trademark Services Pty Ltd was established by Jacqui Pryor who has more than 17 years of experience in the trademark industry. For more information regarding trademarks visit https://www.mmwtrademarks.com.au/