Understanding Trade Mark Classes in Australia

When it comes to trade marks, registering your brand is more than just securing a logo or name—it’s about clearly defining what you’re protecting and where that protection applies. This is where the concept of classes comes in. Choosing the right classes isn’t just a technicality; it’s a fundamental step that shapes the scope and strength of your trade mark rights.

What Are Trade Mark Classes?

Trade mark classes are part of a global system that organizes goods and services into 45 distinct categories, known as the Nice Classification, developed by the World Intellectual Property Organization (WIPO). Classes 1 to 34 cover goods, while classes 35 to 45 cover services. Australia follows this international framework, so your application must specify the classes that align with your business offerings.

For example-

• Class 25 covers clothing and footwear.
• Class 35 includes retail and advertising services.
• Class 9 covers technology products like software and electronics.

Each class functions like its own silo. A trade mark registered in one class generally won’t stop someone from using the same mark in a completely unrelated class, say, someone selling beer (class 32) while you’re making skincare products (class 3).

Why Choosing the Right Class Is Crucial?

Choosing the correct classes in your application has a ripple effect on your trade mark’s enforceability and value. Here’s why it’s so important:

Defines Your Legal Protection- Your trade mark rights only extend to the goods and services you’ve listed in your application. If you don’t include a product or service category that you offer or plan to offer your trade mark won’t protect you in that area.

Helps Prevent Infringement- A clearly classified trade mark makes it easier to enforce your rights. Courts and IP Australia rely on your class specifications to determine if someone else is infringing on your brand. If your goods/services aren’t clearly or correctly listed, your case might be harder to prove.

Affects Trade Mark Searches- Trade mark examiners and others conducting searches use classification as a filter. If your application includes vague or incorrect classes, it could be overlooked or conflict with an earlier mark without either party realising until it’s too late.

Saves Time and Money- Amending or reapplying due to class errors is a costly headache. Correct classification at the outset reduces delays and gives your application a smoother path to registration.

How to Choose the Right Classes?

Here’s how to make smart decisions when choosing your classes-

• Start With What You Actually Sell or Do- List out the products or services your business currently provides or plans to offer in the next few years. Be specific. For example, “clothing” is broad, but “sportswear and yoga apparel” helps target your true niche.
• Use the IP Australia Picklist– Australia offers a tool called the Trade Marks Classification Search, which includes a database (often referred to as the “picklist”) of pre-approved terms. This makes it easier to match your goods/services with the appropriate class and wording. Using picklist terms also speeds up examination, as IP Australia is already familiar with their classification.
• Avoid Overgeneralizing- Expressions like “all goods” or “all other services” aren’t accepted. Try to use clear, specific, and recognisable language. If your offering doesn’t match any picklist terms, you’ll need to describe it in a way that allows examiners to determine the correct class.
• Think Ahead, but Not Too Far- While you can include products/services you intend to use in the near future, don’t overreach. If you don’t use the trade mark in connection with those goods/services within five years, it could be vulnerable to removal for non-use.

Common mistakes to Avoid

Some common mistakes include-

• Filing under the wrong class because of confusing or outdated product categories.
• Using vague terms like “technology products” without specifying if you mean software (class 9), tech consulting (class 42), or IT training (class 41).
• Filing only one class to save money, while leaving key offerings unprotected.

The consequences? You may end up needing to file again, losing time, money, and potentially your competitive edge.

Your trade mark application is only as strong as its foundations and that foundation starts with getting your classification right. It’s not just about ticking a box. It’s about shaping your legal rights, your market presence, and your ability to grow your brand with confidence.