International Trademark Classes

International Trademark Classes

Author: Ian Aldridge, Progressive Legal

On this page we discuss the different international trademark classes, how to search for trademarks in international classes, what to do if your trademark is registered in a different class, and tips on searching for trademarks in international classes.

The World Intellectual Property Organisation (WIPO) provides the main trade mark classes by specifying all goods and services into 45 classes, and each class can cover a wide range of goods or services. Classes 1-34 are for goods, classes 35-45 are for services.

It is crucial that you apply for the correct classes at the time of filing, because your trade mark registration will only protect your trade mark for the goods and services that you’ve identified on your application. You cannot expand  the specification of goods and services once you’ve applied for your trade mark, and a new application will be required to add any additional goods or services to your scope of protection.

How to search for trademarks in international classes

You can search for both Australian and international trademarks by word, phrase, image, owner and classes of goods and services on the above databases.

To search in the same international class as your goods or services fall into, you will need to specify the international class of goods and services according to the WIPO classification.

By searching trademarks in a specific international class, you will be able to locate the trademarks that are most likely to cover similar goods or services to the ones you provide.

What to do if your trademark is registered in a different class?

If you’ve located a registered trademark for your brand during your trademark international class search, it’s possible that this trademark may be a barrier to acceptance of your trade mark.

However, if the goods and/or services listed under this registered trademark are considered sufficiently different to the goods and/or services you’re providing, it may also be completely possible for both trademarks to co-exist on the trademarks register.

In case of any doubt, please contact our team of trade mark lawyers and attorneys for further advice.

Tips for searching for trademarks in international classes

• The international classes are similar to departments in a large store as they categorise items into departments to help you find the ones that are similar or related to the ones you came for.
• There are 45 classes that cover all goods and services, and each class can cover a wide range of goods or services.  Classes 1-34 are for goods, classes 35-45 are for services.
• Many trademark databases, including the Australian trademarks database, provide the possibility to search the trademark database based on the international classes provided by WIPO.
• Some trademark databases also have the option to include any closely associated international classes to your trademark search. This will broaden your trademark search to include any international trademark classes that are closely related to the class your goods and/or services fall into.

If you’re interested in extending your trade mark rights overseas, we highly recommend having our team of experienced trademark lawyers and attorneys conduct a clearance search prior to proceeding with international trademark applications using either method above.

How to use the international class search feature on the USPTO website

The United States Patent and Trademark Office (USPTO) also has a local trademark database.

It’s important to identify the correct trademark classes when searching the Trademark Electronic Search System (TESS) – as the TESS database has records for millions of trademarks, you need a strategic approach to search effectively. By specifying the international trademark classes your goods and/or services fall into, you can make it easier to find trademarks that are likely to be considered similar to yours because they cover similar goods and/or services.

If you opt for a structured search on the TESS database available on the USPTO website, you can specify the search field and choose “International Class”. This will specify the search results to trade marks in this class only. If you wish to search for a trademark in more than 1 class, you can change the operator of your search from “OR” to “AND” and fill out another class for the second search term.

TIP: the international class should be specified with 3 digits, making international class 1 “001” and international class 45 “045” etc.!

Are you interested in protecting your brand with trademark rights, but unsure what classes you require?

At Progressive Legal, we make sure to get to know your business dealings to the core and provide tailored advice on which trade mark classes you need, to ensure proper trade mark protection moving forward.

Do you need help with international trademark classes?

Please get in touch with us today via phone or the contact form on this page.

1800 820 083