Should I Register a Trademark in a Different Class?

In our experience it isn’t unusual for businesses to expand their offerings over time as they grow. And with that expansion, there often does arise the need to review the scope of their trademark. And in particular the scope of the goods and services that are actually covered by any trademark registrations that a business owns. Sometimes that scope may require trademark applications in a different class. Even if the new product or service falls within the same class number as the original trade mark, a new application would be required in order to protect the trade mark for any additional products or service.

It’s important to be aware that just because you have a trademark in one class does not necessarily mean that you’re entitled and able to register your trademark in a different class. So in essence, if you have a trademark registration, you can’t expand the scope of the goods or the services that are covered by that registration. Once you filed your application, the scope is set in stone save as to amending the scope in a way that limits or narrows that original scope. It’s definitely a good idea at the time of filing a trademark application to have some forethought about what goods and services you might want to expand into in the future, if that’s practical.

Nevertheless, you might find yourself in a situation as a business where you’ve become interested in goods or services that you haven’t previously sold or provided and that aren’t covered by the registered trademarks that you own. It just means that you need to file a new trademark application and it will be assessed as at the date you file it. For example, even if you’ve been using your trademark for 10 years in relation to clothing if you decide now, 10 years later, that you’re interested in using it for jewellery, you’ll need to go back to square one and file an application for that trade mark in relation to jewellery products. In doing so, you would be best served to have a trade mark search conducted before filing to see if you’re actually entitled to use the same trademark and have the same trademark protected for jewellery as well as clothing. This is because jewellery and clothing are in different classes and they are considered to be different goods. So basically just because you own your trademark for one class of goods, doesn’t mean that you’re entitled to have the same trademark protected for a different class of goods. It’s possible, sticking with the clothing and jewellery example that another party has acquired rights in a similar brand for jewellery before you have entered that market.

What Are Classes and Why Are They So Important?

So what are classes and why are they so important?. In brief, classes are basically categories of product or service. There are 45 classes to select from, with each of these covering a large number of things. They are used predominantly to determine the sorts of products or services you have the right to ‘brand’ with your registered trade mark, and also help determine whether a later user/filer is perhaps attempting to use or register an infringing mark.

A lot of people assume that registration of their trade mark provides a blanket ownership to that trade mark, when it doesn’t. Furthermore, there is a misconception that by registering in a particular class number you are protected for any and all goods in that class, when this is also not the case.

This might be compounded by the fact that you do have some very big brands out there that exist and are used in relation to a wide variety of goods and services. And so smaller businesses sometimes have a mistaken assumption that because they have their trademark for one particular class of goods or services, or even one particular kind of product or service within a class, that they are entitled to protection for other goods or services that are not specified in the trade mark registration, when this is simply not the case. This becomes quite important in context of enforcement or registered marks as well. It’s always a good idea to seek advice from a trade marks attorney rather than take a DIY approach if you’re unsure as to the scope of your rights, before you start sending off demand letters for instance.  Sending a demand letter thinking you have the necessary rights, but actually don’t, can back-fire and provide the recipient a cause of action against you for making ‘groundless threats’ in the field of trade mark infringement.

Can Businesses Register Their Trade Marks in Other or Further Classes, Even if Not Yet Used for the Goods/Services in Those Classes?

Yes, if you have an intention to use your trade mark for those additional goods/services. When we say intention, we mean a true intention, not the speculative intention. Ideally you would have a reasonably solid business and/or marketing plan that speaks to this intention to show you have a real intention to move into those other areas at some point in the foreseeable future. Saying say to yourself, for example, I’ve got a clothing label (which would fall under class 25), but I’m going to also file for bags, handbags in class 18 ‘just in case’ may not amount to a true intention to use your trade mark for the class 18 bags goods. Doing this, even though you don’t have any real plans to move into that space could result in a vulnerable application and/or registration in so far as those class 18 bags are concerned.  Sometimes people do file trademarks covering 10 classes of goods without any firm intention of using the trademark for the nominated goods or services in all of those classes. These applications (or registrations) become vulnerable to attack.  This is  because when you file a trademark, there’s a rebuttable presumption that you intend to use it for all of those goods. But if you don’t use it for those goods, then your trademark that will become vulnerable at some point to attack for non-use and/or no intention to use.

How Can You Demonstrate Intention?

At the point when you’re filing a trademark application, the filing of the trademark application is taken at face value to be evidence of an intention. However, if somebody were to oppose your application, after acceptance has occurred, one of the possible grounds of opposition is a lack of intention in good faith to use the trademark for all or some of the nominated goods/services. So that while the filing of the trademark is taken to be prima facie evidence of that intention to use your mark for the designated goods and/or services,  if there are circumstances that suggest that you didn’t actually intend to, then you could fall foul of that ground of opposition. Furthermore, a third party can seek to remove a registered mark (for all or some goods/services) on the grounds that the owner did not intend to use the mark in good faith. Such removal application can be made any time after the mark is registered. Or, after 3 years a third party can seek to remove the mark for all or some of the goods if not put to any use during those three years for the ‘removal’ goods or services.  We also note that the ability to seek removal after 3 years is a recent development. Marks filed before these changes came into effect earlier in 2019 are only vulnerable to a removal for non-use attack of this kind once they’ve been on the register for 5 years.

It’s a complicated area of trademark law. We had a case recently where a company filed a trademark application, which they didn’t actually, at the time of filing, intend to use as a trademark for the particular products in question. The real reason they filed the trademark was to attempt to prevent our client from using the trademark for those goods. And that transpired in the evidence. The result in that case is that the company has had its trade mark removed on the finding there was never an intention in good faith to use the relevant mark for those goods as claimed, and that our client’s trade mark has been allowed to register.

So at the time of filing the application, there won’t be any scrutiny. If you were to file a trademark application for 10 classes of goods and/or services, the examiner is not going to interrogate you about whether you intend to use the trademark for those goods or services. It will be taken that you do intend to do so. However, that’s not to say that an opposition or future removal request wouldn’t result in further inspection. Basically, as far as prudent commercial practice goes, assuming good faith, we would encourage clients to be sensible in the classes and the goods/services nominated at the time of filing, if for no other reason than because there are costs associated with the number of classes that you file under. Filing under 10 or 20 classes with no real intention to use your mark for the relevant goods/services is not a cost effective plan, particularly given the vulnerability of the trade mark.

In short, if you’re not going to expand your business within three years to other classes of goods or services it may not make commercial sense to be covering all of those goods at the initial filing date. We would always say to clients, have a business plan in place, have a realistic business plan in place about what other products or services that you realistically will be offering under your trademark over the coming few years. And those are the goods and services that you really want to seek protection for in your trademark application. Review your plans frequently, ever year or so to determine whether the trademark protection that you have aligns with that business plan, going forward. And if it doesn’t, you might want to seek to review that protection and file a new application.

Also keep in mind that you might be in a situation some point in the future where you can’t protect your trademark for everything under the sun and that’s just unfortunately the way it goes with some trademarks. trade mark registration/protection is limited to the goods and services covered by the registrations with a little bit of wiggle room. If you want to enforce your trademark you can enforce it against others who are using your mark or deceptively similar mark for something that is similar, or closely related. So you have a little bit of extra protection in addition to what you’re actually registered for.

Is Registering in Trade Mark Classes You Don’t Need Like Domain Name Squatting?

We know that sometimes people register domain names, without any intention of using them for the purpose of displaying a commercial website – sometimes simply to try and monetise on that.

If a trade mark applicant was to file a trade mark application simply and purely to monetise by trying to sell to the ‘rightful owner’, in Australia, this is a clear ground for opposing the application as being filed in bad-faith.

More likely, filing for classes you don’t need nor intend to use your trade mark in relation to is vulnerable to the removal or opposition attacks on grounds relating to no intention to use/no actual use. This is a bit different to the ‘domain squatting’ concept, as some domain extensions do not prohibit registration for the purpose of selling to others.

Unsure if your trade mark covers what you need it to? Feel free to get in touch and we’re happy to review your existing registration/s against your current activities to see if there’s more you can or should be doing to protect your brand.

Jacqui Pryor

Jacqui is a registered trade marks attorney with the Trans-Tasman IP Attorneys Board and is the founder and owner of Mark My Words Trademark Services Pty Ltd.

After being introduced to the world of trade marks in one of her first jobs after high school, Jacqui discovered she had a deep passion and interest for all things to do with protecting brands and intellectual property. She completed a Graduate Certificate in Trade Mark Law and Practices as well as a Diploma in Business Management and then set up her own business in 2011.

Her motivation for starting Mark My Words was to support SMEs which typically couldn’t afford such a service and while the company has grown in both size and reputation over the years, she has remained true to her founding principles of providing professional, friendly, reliable and affordable trade mark services to all.

Mark My Words now has a client list that spans businesses of all sizes across a range of industries. It provides advice and assistance on all types of complex trade mark registrations, infringements and opposition matters both in Australia as well as overseas.

Jacqui’s wealth of experience, broad range of professional qualifications and her ongoing participation in industry forums and networking platforms keeps her at the forefront of developments in the global trade mark arena. Her expertise in her field has also led to several nominations as a top individual trademark attorney by the World Trademark Review - the world’s leading trademark intelligence platform.

To keep up to date with the latest in the field of trade marks, follow Jacqui and MMW Trademark Services on Facebook.

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