Using the Trade Marks Pick List

The Trade Mark Pick List is a tool that simplifies the process of selecting the correct classes of goods and services when filing a trade mark application. It helps applicants avoid errors by providing predefined options, ensuring that their application accurately reflects their business activities. Additionally, using the Pick List offers cost advantages, as trade mark applications that use it may be eligible for a discounted fee. The system also calculates the application cost in real time, allowing applicants to make informed financial decisions upfront.

Selecting the Right Trade Mark Classes

Before using the Pick List, it is crucial to determine whether the trade mark is meant to protect goods, services, or both. The classification system is divided as follows:

• Goods fall under Classes 1 to 34
• Services are categorized under Classes 35 to 45

For businesses that offer both goods and services, a combination of classes must be selected. Applicants should carefully assess their core business activities to determine whether they need to protect the products they sell, the services they provide, or both.

A hairdresser primarily offers hairdressing services, which fall under Class 44. However, if they also manufacture and sell their own line of hair care products, they should register under Class 3 for those goods. On the other hand, if they simply sell products from other brands, they do not need to register for Class 3. Instead, if retail services form a major part of their business, they might choose Class 35 to protect their retail operations.

TM picklist office fees and costs

The cost of filing a standard trade mark application begins at $250. Applicants can reduce their fees by utilizing this picklist, an extensive, searchable database of over 60,000 pre-approved goods and services, categorized into 45 distinct classes. Choosing from the picklist streamlines the application process and ensures alignment with established classifications.

The fee structure varies depending on whether the picklist is used and whether the application is for a series trade mark. A standard trade mark application using the picklist incurs a fee of $250 per class, whereas applications without the picklist cost $400 per class. Also, in case of series trade mark applications, the fees are $400 with the picklist and $550 without it.

Each class contains multiple items, but applicants should only select the ones relevant to their business. For example, if a business produces acrylic false nails, they should select that item under Class 3, but not other unrelated products like hairspray or carpet shampoo.

Avoiding Unnecessary Class Selections

No Need to Cover Internal Business Functions- Trade mark protection should focus on core business activities, not routine internal tasks such as:

• Advertising
• Website maintenance
• Employee recruitment

For example, a physiotherapy clinic only needs to register under Class 44 for physiotherapy services. It does not need to include classes for website management or advertising, as these are incidental to its primary business.

No Need to Cover Promotional Items- Branded promotional items (e.g., pens, coffee cups, calendars) featuring a company’s logo do not require separate trade mark protection. Applicants should focus on covering their core goods and services, not marketing materials.

Evolving landscape

As digital markets are evolving, IP Australia has issued updated guidance on trade mark classifications related to virtual goods, the metaverse, NFTs, and blockchain technology. For virtual goods, such as digital clothing or artwork used in virtual environments, the correct classification is under Class 9, as these items are essentially data-based. However, applicants must be specific, i.e. vague terms like “virtual goods” or “downloadable goods” are no longer acceptable. Instead, clear descriptions like “downloadable virtual clothing” should be used.

Services conducted in virtual environments are treated similarly to their real-world counterparts, with classification based on the nature of the service and its real-world impact. For instance, educational or entertainment services provided in a virtual space would still be classified under Class 41, while financial services offered through digital platforms involving real monetary transactions fall under Class 36. However, that being said, in cases where the service is fundamentally different in its virtual form, such as a virtual restaurant where avatars interact, IP Australia may reclassify it as an entertainment service under Class 41, rather than as a traditional restaurant service under Class 43.

Non-fungible tokens (NFTs), also being digital certificates rather than goods themselves, must also be clearly specified in the context of the items they authenticate. An application stating only “NFTs” is insufficient. Instead, applicants should describe the goods associated with the NFT, such as “downloadable digital image files authenticated by NFTs” under Class 9. So, services relating to NFTs, like online retail or software development for NFT minting, may fall under Classes 35 or 42, depending on their nature.

That said, blockchain also should not be treated as a standalone item. It is a feature or mechanism through which services are delivered. For example, software that facilitates blockchain operations is classified under Class 9, while financial services using blockchain might be under Class 36, and smart contract programming could fall under Class 42.

Key Takeaways for Cost Savings

Using the Trade Mark Pick List effectively ensures that businesses only pay for necessary classes, avoiding excess fees. To maximize savings:

• Use the Pick List to access discounted application fees.
• Select the correct classes based on core business activities.
• Avoid unnecessary selections such as promotional items and internal business functions.
• Choose broader categories when possible to allow for future business expansion.

By carefully selecting trade mark classes and leveraging the Pick List, businesses can streamline the application process while minimizing costs.

So, if you’re looking to protect your brand, our team at LexGeneris is here to help. We handle everything from start to finish, so you can focus on what you do best, i.e. growing your business.

Contact us today to book a free initial consultation or to start your trade mark application with confidence.