Choose wise - Choosing Trade Mark goods and services
Transcript: Choose wise - Choosing Trade Mark goods and services
Summary: Choose wise is a series of videos designed to make the process of choosing goods or services in your trade mark application easier. This series highlights common issues that applicants experience when applying.
IP Australia is the Australian Government agency that administers intellectual property (IP) rights and legislation relating to patents, trade marks, designs and plant breeder's rights.
Choose wise is a series of videos designed to make the process of choosing goods or services in your trade mark application easier. This series highlights common issues that applicants experience when applying.
Firstly let me introduce...ah... let's call him "Simon". Simon, like you, is completing his trade mark application. Hello Simon. Simon, we know you are a busy man so let's get to it. Ready?
Currently, there are 45 Trade Mark classes to choose from. Classes 1 to 34 are for goods and 35 to 45 are for services. The heading of each class tells you the type of goods or services covered.
When filling out your Trade Mark application Simon, you may choose to use the "pick list". This is a search engine that will allow you to enter keywords, which are then matched with possible claims that are listed in the correct classes. Sounds pretty simple right? Remember that a Trade Mark registration will give you exclusive rights to use of your Trade Mark in connection with the goods and/or services you are claiming.
So, Simon, what is your business? Ah, so you're in the toy game...
All right. First, we need to figure out if your application should be for goods, services or both. Your Trade Mark will be granted in relation to the goods and or services you choose. For your Trade Mark to be adequately protected you need to understand the Trade Mark classes and how to select the right goods or services.
Simon, pay attention! This could save you money.
A Trade Mark is granted in relation only to the goods or services you apply for: not EVERY good or service. Yes, it’s true, the more you choose, the more you pay! But if you don’t choose the right goods or services then you may not have adequate trade mark protection.
If you don't choose carefully, not only could you be applying for your trade mark in too many classes and paying too much money, but if you register your trade mark in a class that does not match your business you may end up without the protection you actually need. Even worse, Simon, after you have applied for your trade mark you can’t change it or add to the goods or services you have chosen. ...so let’s get this right the first time.
SECTION: IF I HAVE GOODS AND OR SERVICES IN A CLASS, DOES THAT COVER ME FOR THE WHOLE CLASS?
Meet Bob. Bob manufactures computers so it makes sense that he would be selecting one of the goods classes (Classes 1-34).
Remember that a trade mark application is made in connection with the specified goods and/or services in the application.
Only the goods and/or services claimed in the application are covered and, once your trade mark application has been lodged, it is no longer possible to add more goods and services to it.
So Bob here has a look at the Class Headings and has seen that computers are included in the Class 9 heading. So Bob chooses "computers" in Class 9. Bob wonders though, as he now has Class 9 in his application, if that covers him for everything in Class 9. No, Bob. It doesn’t.
Your Trade Mark protection will only be in relation to the specific goods and/or services you have listed in your application.
Again, don’t forget that the "Pick list" is the searchable solution for understanding the different class items.
Some words appear numerous times under different Classes. Be smart like Bob. Have a look at the Class Headings to get an idea of what class may be the most suitable for you. You may then choose the items that used your keyword and are in the appropriate Class.
Consider the language you are using when searching the "Pick list". There may be a couple of ways to refer to your particular goods or services. If you’re a builder and you search for 'builder' that will result in items in Class 6, 8 and 19.
But it doesn't give you Class 37 for 'building services'. A search for "build" would do the trick.
How many items should I choose? Choose the goods and/or services that apply to your business.
A search for building includes "building demolition", "building insulating" and "building of bridges" you may only choose "building demolition" and "building insulating" if you don't actually build bridges.
SECTION: RETAIL SERVICES
Here we have Joe, good old hard working and snappily dressed Joe.
So Joe, you want to register your Trade Mark for the clothing you make in a local factory. Sounds like a great business, Joe.
People like Joe often apply for "retail services" because they intend to, or already do, sell the clothing they make.
Remember that a Trade Mark is for use in the course of your business Joe, and selling your goods is an obvious part of that business, so as the manufacturer of goods, you can sell those goods and be covered by your Trade Mark. You don't necessarily need to apply for "retail services".
Typically, Joe, your Trade Mark would fall under Class 25 for clothing. There is no need to register in any other classes if making clothes is your only activity. However, if you were to open your own shop and sell other people’s clothes or products as well as your own, this would be a ‘retail service’ under Class 35.
A claim for 'retail services' is the bringing together, for the benefit of others, a variety of goods enabling customers to conveniently view and purchase the goods.
Joe! Joe! Are you listening?!
A claim for "clothing" in Class 25 is a claim for those goods and allows Joe, as the Trade Mark owner, to sell those goods in the ordinary course of his business. If Joe is also retailing the goods of others, a claim for "retail services" in Class 35 would protect him for those services.
But... if Joe is not retailing the goods of others then a claim for "retail services" in Class 35 may not apply and if that were the only class he applied for, it could also mean his own manufactured clothing is not covered by his application either.
SECTION: ADVERTISING YOUR BUSINESS VS. ADVERTISING FOR OTHERS
Let me introduce… Dean. Dean would like to register a Trade Mark for his legal firm. Dean is unsure whether he should include a claim for "advertising services" in Class 35, as he advertises his business in a local directory and online.
A claim for "advertising services", however, is a claim for providing advertising for others as a service. Dean's legal firm does not advertise for other businesses. With that in mind, this is probably not the correct claim for Dean. He is providing legal services, which are in Class 45, and not advertising services.
Before claiming services, ask yourself: "Do I provide these services for other businesses?"
Hey Dean, don’t waist your money with a claim for "advertising services" in Class 35. If all you do is provide legal services, you only need to claim "legal services" in Class 45.
You can still advertise your legal service as that is a built in part of your business.
SERVICES: INSTALLATION, MAINTENANCE AND REPAIR SERVICES VS. GOODS BEING INSTALLED, MAINTAINED AND REPAIRS
Have I told you about this chap I know, Peter? Peter’s been a mechanic for many years. He's opening his own business and wants to register his Trade Mark.
Peter does the usual work of a mechanic: maintenance, installation and repairs on people's cars. As a mechanic Peter provides maintenance, installation and repair services on vehicles, he works with vehicles and installs parts, so he wonders if he should include a claim for cars and/or car parts?
A claim for cars or vehicles would be for those people or companies that manufacture or produce cars. Peter is a mechanic, not a multinational car manufacturer. If he's not making cars, he would not need a claim for cars. It's also the same with the parts Peter installs. He doesn’t manufacture them, so he doesn’t need to claim for them.
Peter is just providing maintenance, installation and repair services. An appropriate claim for him is "maintenance, installation and repair services" in Class 37.
Good job Peter and good luck with your business.
SECTION: WHAT ARE YOU KNOWN FOR? WHAT IS THE END PRODUCT?
This is Dimitri.
Dimitri makes yacht sails but has claimed sewing machines and fabric on his TM application Dimitri should only claim the final product and not the goods that go into manufacturing them.
Claiming sewing machines will not cover him for yacht sails. Dimitri, you should consider the end product and it will be happy sailing.
Dimitri’s mate Steve works in window installation and maintenance in Melbourne's CBD.
He does not manufacture the windows himself, he imports and installs them, so a claim for windows would not cover the business he conducts.
Steve is providing a service, not goods. He provides "installation, maintenance and repairs of windows". Class 37 is the one for Steve.
SECTION: INTERNAL BUSINESS FUNCTIONS
Hello, Adam. You work as a builder, don't you?
Well you know those flyers you give out to advertise your business? The ones you leave with your previous clients?
Well you don't need to claim them separately as they are a part of the normal course of trade for your business... you don’t make up flyers for other businesses do you? Graphic design is not your strong point
That reminds me of another fellow I know called Bruce. He's in a similar situation to Adam here.
Bruce is a lawyer and he has wisely chosen legal services in Class 45 on his application.
But, he has also chosen "business administration" and "office functions" in Class 35 as he sees these as part of his business. He’s then added "recruitment services" in Class 35 because he recruits office staff and he has also claimed telecommunication services in Class 38 because he uses telephones and mobile phones in his business as well as the internet.
Bruce reviews his application and realises he has claimed 3 classes. Applications are priced per class, so this is starting to add up.
Hey Bruce before you submit... here’s a tip. What part of a business directory would you advertise in?
Go on, look it up.
Of course you are running a legal firm and would be listed under legal services. Would you list yourself under business administration, recruitment services or telecommunications? (No).
Bruce, the running of your business, the administration, recruitment and telecommunication, are internal business functions only. You provide “legal services”, which belong in just one class, so save the money claiming these internal business activities in other classes.
Thanks, Bruce, you have been most useful in demonstrating that there is no need to claim internal business functions. You may go!
SECTION: I HAVE A WEBSITE
Terry runs a gym on the Sunshine Coast and he has recently set up a website with detailed information about his personal training sessions.
Terry is a good looking, fit guy and training others to be the same is his business.
Terry, you look confused. Are you wondering how to claim a website on your application? Don’t panic, Terry, and keep running.
Your website is just a part of your business. A claim for "training services" in Class 41 allows you to provide those services by any means, including via a website or using a website to promote your business.
Now Terry, if you decided to become an internet service provider that's a different story and would need and application in class 42 as Class 42 is related to hosting web sites and other techno babble.
Far less interesting than 200 chin-ups!
That reminds me I think my membership has just run out.
SECTION: MY TRADE MARK IS ON IT
Kevin, an accountant with a propensity for detail has been in business a few years. He has updated his business logo and eagerly applied it to mugs, mouse mats, calculators, stationary, all manner of merchandise to promote his business.
Kevin, you don't sell these items, do you?
In that case, you may not require Trade Mark protection for them. If these goods are simply used to promote your business, you don't need to claim for them. You just need to claim for "accounting services" in Class 35.
SECTION: THE LIST DOESN’T COVER WHAT I DO
Let me introduce you to the "Pick List"
The pick list is not exhaustive, but it does cover an incredibly large number of goods and services. In fact, the pick list has over sixty thousand entries, so almost any good or service can be covered by an item on the list.
Also, a broad claim can cover the applicant's desired specific claim. For example, David here, manufactures socks with printed green dinosaurs on them. It may not be a good idea for David to narrow his claim to be so specific as there is little flexibility for his product to evolve and he may then be left unprotected.
The item "Socks with green dinosaurs on them" isn’t on the Pick List, but "socks" are, how big is a dinosaur egg? Now, come in a little narrower....
A little narrower....
Yes, that's right... additionally, though; if your claim is too broad it is possible that you are exposing yourself for non-use by a third party. This is where another person can take legal action against you and affect your Trade Mark protection for not using your Trade Mark across all the goods and/or services you have applied for.
So David I'd suggest a claim for "socks" Class 25. That should keep your claim appropriate to your actual business focus.
Just use your common sense, save money and get the appropriate protection. For most traders, there is definitely something in the Pick List that would cover you adequately.
SECTION: SUMMARY
A quick recap if I may....
- Clarify the focus of your business; are you a producer of goods, a service provider or both?
- You dontt need to apply in as many classes as possible as it may provide you with no additional coverage and you could be open to non-use actions if the goods and or services claimed are not part of your business
- Consider the output at the end of your business process when selecting the most appropriate claims; what do people pay you money for?
- Remember you can always apply for another trade mark if you expand your business.
- So whether you are a Bob, David, Joe, Terry, Dimitri, Adam or Steve… selecting the appropriate Trade Mark class and claims will save you money, give you the appropriate coverage and let you sleep easy at night.
Now it's time to finalise your Trade Mark application and get back to work.
Additional information can be found at IP Australia’s website where you can also find the Pick List or the classification search facility, alternatively you can call the customer service number on 1300 65 10 10.
This video is intended for educational use only. Product names, logos, brands, and other trade marks featured or referred to in this video are the property of their respective trade mark holders.
These trade mark holders are not affiliated with IP Australia.
Last Updated: 11/12/2012
