Registering your trademark is one thing, but selecting the right class (or classes) is another matter.
As a business owner, you probably have a good idea of what type of product it is you’re selling. However, when you go to register your trademark it can be hard to know what class to choose. What you may not be aware of is that you can register your trademark in multiple classes. This will not only make sure you cover all your bases, but also give you better overall protection.
In this article, we’ll discuss the different trademark classes and how to know if you should select one or many.
When registering a trademark you must register it in a particular class or classes. This serves to categorise what ‘type’ of product or service it is that you’re selling. Trademarks are divided into 45 different classes. 34 of these are considered goods, and 11 are services.
A famous example…
Have you ever noticed that there are two products that although markedly different, have the same name? A well known case of this is the brand name ‘Dove’. You may have seen Dove soaps and shampoos and Dove chocolates. You’d be forgiven for thinking that these products are owned by the same company, but they’re not. They can both be branded and sold under the Dove name because the trademarks for both are registered in different classes.
What class should I choose?
Even if you’re looking to trademark the logo of your new cafe, your trademark can be in multiple classes. Firstly, you’d choose the class which most fits what your product or service does. For example, if you operate a cafe, you’d opt for ‘provision of services’ first. However, there are many other classes you could also register in.
Following on from our example, your cafe would first come under class 43 (services for providing food and drink). However, you may want to use your trademark on other things associated with your cafe such as coffee cups or flasks. This would be registrable under class 3. You may even wish to trademark the unique smell of your brew as a scent under class 3.
All of these activities, although associated with your cafe, will be registrable under separate categories. This knowledge is essential as it can help you protect your brand further down the track. If you envision your cafe expanding in the future, this is definitely something to consider.
Why register in more than one class?
Firstly, registering your trademark across a number of classes can give your trademark extra protection. For example, you may register a trademark and have it opposed by another trader. This be even though they operate in a considerably different field and their mark is registered in an unrelated class to yours. If your classes are not the same or do not overlap, their trademark cannot be enforced. This occurs because your mark will be protected in the classes that it is registered. Fundamentally, the more classes your mark is registered in, the more protection it will have.
You register the name of your cafe as ‘Common Ground’. You have also registered it in other classes, as you suspect you may want to release some branded mugs. There is also a soil dredging business named ‘Common Ground’ which has been registered since 1989. Despite this, it is unlikely they could take action to enforce their trademark as you both operate in different classes.
Making sure you pick the right classes
It’s important that you receive legal advice on what classes to apply for. This is because you cannot alter your trademark application after you’ve filed with IP Australia. This means that if you register your trademark in only one class, you cannot add another at a later date.
How Do I Know What Classes my Trademark Will Come Under?
It is not an easy endeavour to understand and remember each and every trademark category that IP Australia offers. However, using the Trademarks Classification Search tool on IP Australia’s website is an easy way to understand the classes that your trademark will be associated with.
For example, if you were running a cafe, you could simply search ‘coffee’ and in a separate search ‘cafe’. Doing this would allow you to see the 11 categories you could register you trademark under.
Trademarks are an essential way to protect the reputation and goodwill of your brand. We offer a trademark application service that will ensure your business is protected in the relevant classes. Choosing the right classes for your trademark requires you to think about where you want your business to go in the long run. And when it comes to your business’s future – it’s best not to leave it to chance.
Don’t know where to start? Contact a LawPath consultant on 1800 529 728 to learn more about customising legal documents and obtaining a fixed-fee quote from Australia’s largest legal marketplace.