Insights

Specification is key: the important of trade mark classification

23 July 2022

What are trade marks and what do they protect?

Trade marks are a type of intellectual property that act as a badge of origin for your goods and/or services. Registering your trade mark prevents third parties from using your mark in relation to the same or similar goods or services as you.

When you apply to register your trade mark, you must clearly and accurately specify the goods and/or services of interest (i.e. those upon which you use or intend to use your trade mark), and identify the relevant class(es) in which they fall. There are 45 classes (categories) covering 34 goods classes and 11 services classes. The accurate drafting of the specification is important as registration only provides you with exclusive rights to use your mark in connection with the specified goods and/or services covered by your application (and any resulting registration).

As the specification determines the scope and basis of the trade mark application (and any resulting registration), it is essential to ensure that the specification covers your core goods and/or services, as well as any intended/future goods and/or services. It is important to note that if your offering under the trade mark expands, it is not possible to add additional goods and/or services to the current application/registration – it would be necessary to file a new application. So, when drafting the specification, think future expansion and ensure your dream aspirations are included (you never know how big your brand will become!).

In addition to clearly identifying your goods and services of interest, the classification system also helps to identify whether there are existing trade marks on the Register which may be similar to subsequently filed trade mark applications in the same or similar goods and/or services. This avoids a subsequent trade mark being registered on the Register for a similar brand to yours (for the relevant goods/services), and also helps you to avoid seeking to register a similar mark to one already registered. So, attention to detail is key when drafting your specification.

Use it or lose it

Typically, once a trade mark registration has been registered for 3 years, it becomes vulnerable to removal if it hasn’t been used in connection with the relevant goods and/or services covered by the registration for the preceding 3 years. This means that if you don’t use your trade mark in relation to your core goods and/or services claimed in the specification, then you risk losing your registration (i.e. your statutory trade mark protection). Some preparatory tips on how to make defending a removal application easier are here.

Take home message

In a nutshell, when determining the trade mark classes and crafting an appropriate specification during the trade mark application process, it is essential to do this with care and consideration to ensure appropriate protection now and in the future.

Choosing the correct classes and drafting appropriate specifications to adequately clarify the scope and basis of your offerings can be complicated and can have significant implications if done incorrectly.

A qualified professional can help with this tricky process. Any questions or need more information in drafting your specification? We’d love to help.