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When submitting a trademark application, every applicant is asked to nominate one or more “classes” and then “list the goods and/or services for which you are seeking registration”. Trademark classes are not necessarily the easiest concept to grasp, and it’s worth looking at how a trademark application is examined in order to understand them.
A Hypothetical Application – “Excel”
Figure 1 shows an extract from a hypothetical application by a telecommunications company for the word “Excel”:
The extract nominates class 38, and provides a list of various telecommunications services in a section referred to as the “description”.
Under section 44(1) of the Trade Marks Act 1995 (Cth), the examiner is required to reject the above application if the trademark being applied for is “substantially identical or deceptively similar to” a previously registered trademark “in respect of similar goods or closely related services”. This involves two tasks:
Examiner’s Task 1: Identifying Similar Trademarks
The first task is to work out whether a trademark that is being applied for is “substantially identical or deceptively similar to” a previously registered mark. In other words, the Examiner must determine whether there are any trademarks for the word “Excel” already registered, or whether there are any registered trademarks for similar words (e.g. Excell, Xcell, XCEL etc).
A search of the Trademarks Register in early 2010 uncovered approximately 250 marks that feature the exact word “Excel”, while there are almost 1,200 that feature “Excel” as a “part word” (e.g. “Excelsior”).
Examiner’s Task 2: Comparing the Goods and Services
Once the identical and deceptively similar marks have been identified, the next step is to determine whether those marks have been registered “in respect of similar goods or closely related services“. Take note of the words in italics: it’s not enough that two trademarks are identical or similar to each other … they must relate to similar goods or services before the Examiner has to reject the application.
Strictly speaking, the way to compare two trademarks is to compare their descriptions. In the present example, the description is:
“Telecommunication services including Internet, telephone and mobile phone services, telecommunication advisory and consultancy services including such services provided through telecommunication facilities; providing telecommunication links and connections to the Internet”
The description in relation to one of the identical registered trademarks is:
“Orthopaedic joint implants, surgical instruments for use with orthopaedic joint implants”
Clearly these marks do not conflict. The example application is for a service, not a good, and it is for telecommunications products, not surgical implants. Comparing trademarks in this way would be extremely tedious, but luckily there there is a much faster way.
Trademark Classes: A Comprehensive Classification System
The Trade Marks Act 1995 (Cth) sets up a system whereby the trademark register can be divided up into a number of classes. Australia has adopted the Nice Classification (as in Nice, France) which is administered by the World Intellectual Property Organization (WIPO).
The Nice Classification, which is currently in its 9th edition, divides all trademarks into 45 classes. Classes 1 to 34 are concerned with different types of goods, while classes 35 to 45 are concerned with different types of services. An abbreviated list of the classes of goods and services is here.
Using the Nice Classification System
The Nice Classification System greatly simplifies the task of comparing the goods and services of individual trademarks. In many instances (but not all), potentially conflicting trademarks can be ruled out by simply looking at the classes in which they are classified.
Returning to our example, it can be seen that the word “Excel” has been registered in relation to a wide variety of different goods and services that fall within different classes:
- Class 3 – Laundry detergent – Colgate-Palmolive Company (Reg. No. 319971)
- Class 5 – Baby formula – Nestle (Reg. No. 869048)
- Class 9 – Software – Microsoft Corporation (Reg. No. 1023817)
- Class 10 – Anaesthetic Delivery Systems – Datex-Ohmeda, Inc (Reg. No. 876658)
- Class 11 – Tapware – Ace Gutters Pty Ltd (Reg. No. 932822)
- Class 12 – Cars – Hyundai Motor Company (Reg. No. 622018) (Now removed)
- Class 16 – Paint brushes and rollers – Selleys Pty Limited (Reg. No. 996405)
- Class 36 – Real Estate Agencies – Exceland Property Group (NSW) Pty Limited (Reg. No. 989691)
Clearly, none of the above trademarks conflict with our example, and most could be dismissed simply by looking at the class numbers.
A Caution Against Relying on Class Numbers
While the Nice Classification is extremely useful, it is important not to place too much emphasis on the strict class numbers when identifying conflicting trademarks.
The first reason is that there is a degree of overlap between the classes. For example, while “telecommunications” falls within class 38, class 9 includes “telecommunications devices” while class 37 includes “installing of telecommunications services”.
It is important to bear “related classes” in mind when searching for potentially conflicting marks. In the example above, the application identifies class 38, but finding a registered trademark for the word “Excel” in class 9 would require further analysis because class 9 does include telecommunications devices. On closer inspection, it would become clear that the registration is owned by Microsoft Corporation and is concerned with “spreadsheet software”, and the two marks would almost certainly not be regarded as conflicting.
Changes to the Classification Scheme
The second reason for using the Nice Classification cautiously is that the classes change over time (there being an update every five years), and classification conventions change as well. For example in applications filed before 1 January 2002, playing cards were placed in class 16, but in applications filed after that date they are placed in class 28. Older trademark registrations for playing cards aren’t “re-classified” or moved from class 16 to 28, therefore someone performing a search needs to be aware of trademarks in both of these classes.