Settling on the goods or services to include in your trade mark application is an important decision.
Superficially the process seems relatively easy, especially with online tools to assist
The process can be straightforward, but here are some reasons why achieving first-class protection requires careful analysis, taking into account business and legal considerations:
Once the trade mark application has been filed, it is not possible to subsequently expand the scope of protection of the claimed goods or services. Therefore, it is important that all relevant goods or services are included in the initial trade mark application.
Getting it right at the outset, will assist in avoiding objections, cost and delay at a later date. In addition to ensuring it is correct for Australian purposes, experienced trade mark attorneys can often anticipate and avoid or reduce the likelihood of objection in other countries.
The Australian trade mark application may form the basis of an International Registration for important foreign markets. Therefore, what you file today may literally have far reaching consequences at a later date.
There are some complex issues to navigate such as the protection of “retail services”, whether “software” is a good or service and whether online promotion and provision of goods or services warrants different protection from physical / bricks & mortar delivery.
A goods and services specification and selection of classes may be crafted to anticipate and avoid conflict with existing trade marks.
A trade mark is not just filed to achieve registration. The registration may be relied on in court proceedings to enforce the trade mark rights. Therefore, the whole registration process must be considered with an understanding of litigation and trade mark rights in a contentious context.
Brands play a vital role in business and it may be your business’ most valuable asset. It should be well protected by trade mark registrations.
The Nice classification system is a classification of goods and services administered by the World Intellectual Property Organisation (WIPO) for the purposes of registering trade marks.
It consists of 45 classes; classes 1 to 34 for goods and classes 35 to 45 for services.
In order to provide a flavour of the nature of each class, the classes have a succinct summary known as the class heading. The class headings can be seen here:
The indications of goods or services appearing in the class headings are general indications relating to the fields to which, in principle, the goods or services belong. Further analysis is required in order to ascertain the exact classification of each individual product or service and we can assist with the process and preparation of strong trade mark protection.
“Full description” Requirement for Pharmaceutical Patents Considered by APO | Boehringer Ingelheim Animal Health USA Inc. v Zoetis Services LLC  APO 42