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Trade marks can be valuable intellectual property protections for your business. However, when applying to register your trade mark, there are different kinds of information that you need to tell the Intellectual Property Office of New Zealand (IPONZ). One part of this includes which classes your trade mark will protect. Therefore, this article will discuss which classes you should choose for your New Zealand trade mark application.

Your Trade Mark’s Scope

When you apply to register a trade mark with IPONZ, you have to outline your trade mark elements clearly. These may include:

  • words;
  • phrases;
  • sounds;
  • smells;
  • shapes;
  • symbols; 
  • colours; or
  • a combination of these. 

However, you also need to specify what goods and services you want your trade mark to protect. For instance, say that you apply to register a trade mark in your business logo. You wish to use your logo in your advertising for your plumbing business. Therefore, you would want your trade mark to protect your branding related to plumbing. 

Specifying the goods and services your trade mark protects is critical. It outlines the scope of your trade mark, and the range of protection it gives you. This then translates into the classes you will choose for your trade mark.

What Are Trade Mark Classes?

Once you have determined the goods or services your trade mark applies to, you need to identify what trade mark classes those goods or services come under. These are broad categories for separating the different areas that trade marks can protect. Every good or service comes under these classes.

New Zealand follows the Nice classification system. This international trade mark classification system standardises the organisation of trade marks and what they can protect. Under this system, there are 45 classes, with classes 1 to 34 covering goods and classes 35 to 45 covering services. 

You can file your trade mark in multiple classes. However, trade mark fees increase the more classes your trade mark applies to. Specifically, the starting fee is $100 per class, excluding GST. After that, it costs $200 per class excluding GST to renew your trade mark.

You can access discounts for registering your trade mark with IPONZ. One way of doing so is only using terms from IPONZ’s over 60,000 pre-approved words and phrases in your application for referring to the goods or services your trade mark protects. Then, you can reduce the price to $70 per class, excluding GST.

Trade Mark Essentials in New Zealand

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What Classes Should I Choose?

Choosing the right trade mark classes is an important process for numerous reasons. In particular, these classes determine the scope of your trade mark, and what areas you have protective legal rights for your property.

For instance, if someone applied your skincare product logo (that you have registered as a trade mark) to their skincare products, you may be able to claim trade mark infringement. On the other hand, if someone used a similar logo for their woodcraft objects, you may not have the same rights because your trade mark registration does not include the classes for crafted wood objects.

Once your trade mark registration is finalised, you cannot add more classes to your trade mark registration. Therefore, it is crucial that you carefully consider what classes you should choose. There are various ways to decide, but the classes you choose will depend on the goods or services you provide. Ask yourself the following questions when conducting this evaluation:

  • What exact goods and services do I want my trade mark to protect?
  • Will I actually use this trade mark for these goods or services?
  • How similar to each other are the goods or services I supply?
  • What classes are my competitors using for categorising their trade marks?

Some goods and services can fall into multiple classes, so you need to be careful what you choose. Engaging the help of a trade mark specialist can make this process much more straightforward.

Key Takeaways

Choosing the right classes for your trade mark is a significant step in your trade mark application. These determine the scope of your trade mark, and what areas you have legal rights and protections in. Ensure that you choose classes that correspond to the goods or services your business provides, and that you actively trade in. Once your application is finalised and you own a registered trade mark, you cannot add any new classes. Therefore, you must undergo this process with due diligence.

If you need help with choosing classes for your trade mark, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page.

Frequently Asked Questions

What is a trade mark?

A trade mark is an intellectual property right to protect signs that distinguish your business from others. These usually form a part of your brand, such as your business name or logo.

How should I choose my trade mark’s classes?

The classes your trade mark protects will depend on the goods or services you want it to apply to. Therefore, consider how you want to use your trade mark, and what you want to link it to.

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