What happens if I file a Trade Mark in the Wrong Class?

Author: Ian Aldridge, Progressive Legal

As a business owner, it’s essential to secure the future of your by applying for a trade mark to protect the various brand elements that help customers identify your business. A trade mark can protect any distinctive sign, symbol, word, or phrase that is used to identify and distinguish the goods or services of one business from those of another. Avoid selecting the wrong class for your trade mark by seeking advice from a specialist early in the trade marking process.

There are many different considerations that go into the trade mark registration process, for example, selecting the right classes to cover in your trade mark application. Trade marks are classified into specific trade mark classes based on the nature of the goods or services it represents. 

The correct trade mark classes should be selected before starting the application process. There are 45 goods and services categories to choose from. You can find more information about the trade mark classes here.  

It’s common for businesses to add further trade marks in classes of business when they expand over time, but the thrust of this is you should have protection over all the core goods and/or services so that you’re not leaving the business exposed or having to add them later and wasting money, if you can do it now. Once it’s filed, you can’t expand on the goods/services after that, you can only limit it. Best to measure twice, cut once with these things.  

Why is it important to select the right trade mark classes?

An important part of obtaining trade mark protection is identifying the correct classes that best define the goods or services provided by a business. This allows you to gain the adequate protection your business needs and will prevent others from using similar trade marks for the same or similar offerings.  

You want to ensure that your trade mark only protects the goods and services classes you are using the mark for. This process is crucial for not only ensuring proper brand protection, but also for avoiding any potential trade mark infringement.  

Although it’s important to correctly select trade mark classes when filing an application, many business owners mistakenly file in the wrong class. So, what do you do if this has happened to you?  

What to do if a trade mark is filed in the wrong class?

Once a trade mark application is filed, it’s no longer possible to expand the number of classes in the application – you can only narrow down the classes or individual goods and services already included. For example, if you’ve already registered your trade mark but are expanding business, you might need to expand trade mark protection to additional classes if your new goods and services on offer are categorised into other trade mark classes. For this, you’ll need to file a new trade mark application covering those other classes.  

If you register your trade mark in a class that does not actually reflect the goods and services you provide, you have probably requested protection in a class that you do not need. This means you would have paid additional fees to include this class for no reason. 

Another consequence of applying for trade mark protection in the wrong class is that it increases your liability towards other traders that wish to apply for the same or a similar trade mark in that class. As your trade mark will effectively block their attempt to register their brand, they may oppose your application or try to remove or cancel your trade mark rights due to non-use or bad faith if it’s already registered.  

Importantly, you may also be inadvertently registering the trademark over someone else’s common law rights, which may also lead to a potential trade mark infringement. That is, if another business or person has better rights to the trade mark over the goods/services that you have mistakenly claimed for, they may have a legal cause of action and you could be then be exposed to a costly legal battle for a mistake, even if it wasn’t deliberate.  

Overall, accurately selecting in which class(es) your trade mark requires protection is more cost-effective. And, by only including the goods and/or services your business require, you could very well prevent some unnecessary trade mark disputes down the track. 

Why obtain legal assistance with selecting the right classes for your Trade Mark Application?

Mistakes are easily made in the trade marking process, so it’s important to seek assistance from experts who can provide tailored advice on which trade mark classes are needed to accurately protect your business and brand. 

Have you not yet filed your trade mark? We can help you file your application in a way that minimises the risk of any difficulty down the track. By choosing the right trade mark classes at the time of filing your trade mark application, you can continue using and promoting your brand with the peace of mind that you’ll will be protected with all necessary trade mark rights, and are not infringing on anyone else’s registered rights by filing in the wrong class. 

Our team of trade mark experts can advise you on the steps of a trade mark application process, and help you every step of the way, to get your business the trade mark protection it needs for all its day-to-day dealings.  

Key Takeaways

The trade marking process may seem simple, but unfortunately many businesses do not have the trade mark protection required as the result of some common mistakes during the trade mark application process. It’s crucial to nominate the correct legal entity, file the trademark correctly, ensure adequate protection over all core business activities and have your trade mark protection reflect the growth your of your business every step of the way. 

At Progressive Legal, our team can help determine which classes you require to guarantee the right protection for your business and brand. Contact us on 1800 820 083 to speak with one of our trade mark experts or fill out the form on this page.