Intellectual property is a key business asset that can bring you both brand recognition and profit. However, dealing with intellectual property can become a complex process very fast, so it is crucial that you fully understand how it functions within your business. Trade marks are a part of intellectual property and function within the law in a specific way. Therefore, for some guidance, this article will provide some background to the topic and explain whether you can add a class to your trade mark application.
How Do Trade Marks Work?
A trade mark is a kind of intellectual property, which is an intangible asset that you can own similarly to physical property. This mark is a sign that represents your business and the goods or services it provides and can include:
- words;
- logos;
- shapes;
- colours;
- sounds;
- smells; or
- any combination of the above.
To have firm trade mark rights, you apply to the Intellectual Property Office of New Zealand (IPONZ) to register your trade mark, and if they approve your mark you have stronger legal protection over your property. Therefore, to best protect your business, you may register:
- your business name;
- a logo;
- a slogan; or
- the names of your products.
A trade mark is unique to your business, so it makes you distinct from your competitors. Not only that, if another party attempts to use your trade mark (or other intellectual property) without your permission, you have enforceable legal rights to stop them. In some cases, there may be the possibility of compensation as well.
Additionally, you can license out your trade mark. In this process, other parties may pay you royalties or licensing fees to use your trade mark.
Applying For a Trade Mark
Once you apply to register your trade mark, IPONZ will assess it based on their given criteria. Part of this process includes evaluating your trade mark on its distinctiveness and originality. For instance, if your trade mark uses a term that is too general or simply describes the goods or services you provide, you are unlikely to succeed in your application.
Additionally, when drafting your application, you must specify which classes of goods or services your trade mark will apply to. This step is crucial, as it classifies which areas you have enforceable trade mark rights over and which areas you do not.
For instance, say that you have registered a trade mark in your product name that applies to classes of goods covering furniture products. Typically, you cannot then enforce your trade mark in skincare products, as your trade mark is not registered to apply to those classes of goods.
Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.
What Kinds of Classes Are There?
New Zealand uses the Nice Classification system to determine its trade mark classes. This international classification system has 45 classes in total, with classes 1 to 34 covering goods and classes 35-45 covering services.
When IPONZ assesses your trade mark, they test for its distinctiveness concerning the classes of goods and services you have registered it for.
Adding a Class to Your Trade Mark Application
When applying for your trade mark, think carefully about what classes of goods and services you want to register your trade mark for. The more classes you register for, the greater your scope of protection. However, a trade mark application costs $100 per class, so if you are not careful, your costs can add up quickly. Engaging the help of a trade mark specialist can help you determine what classes are crucial for your trade mark.
To avoid complications, it is best that you lay out all of your intended classes within your original trade mark application. However, there is the potential to add classes at a later date, as long as you do it before IPONZ accepts your trade mark application. You must make this application for a change in writing, and include details such as your:
- name as the applicant;
- contact information; and
- trade mark information.
Despite this, you cannot add classes that apply to goods and services that fall outside of your original application. For instance, if your original trade mark applied to makeup products, you could not then request to add a class relating to hand tools later on.
Key Takeaways
Your trade mark has classes of goods and services that it applies to. It then protects your business within these specific areas. If you wish to add another class to your trade mark application, you can do so, but you must comply with IPONZ’s requirements as part of the process. If you would like more information or help with adding a class to your trade mark, contact LegalVision’s trade mark lawyers on 0800 005 570 or fill out the form on this page.
Frequently Asked Questions
A trade mark is a kind of intellectual property. It refers to a sign (such as a word, logo, or shape) that represents your business and its goods or services. Examples could include your business’ name or logo.
You can add another class to your trade mark application. However, you must do so before IPONZ accepts your application and pay the $100 fee per class. You also cannot add a class that would broaden your trade mark’s original scope of goods or services it applies to.
We appreciate your feedback – your submission has been successfully received.
