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A Guide to Trade Mark Class 42  

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Trade mark classes are important for determining the scope of your trade mark protection. Importantly, under the class system, each mark is assigned to a different category of goods and services. Among these trade mark classes is trade mark class 42. This class is unique and multifaceted and covers a wide range of professional services. This article will act as a guide to help you understand the nuances of trade mark class 42.

What Are Trade Mark Classes?

Trade mark classes are a tool used to organise goods and services for trade mark registration. The Nice classification system stands as the most widely adopted standard globally. New Zealand uses the Nice classification system when it comes to assigning trade marks a class. 

Perhaps most importantly, the 45 classes define the scope of your trade mark protection. However, trade mark classes also ensure specificity throughout the registration process. This helps make the process efficient.

What is the Scope of Trade Mark Class 42?

Trade mark class 42 covers services related to science and technology. As such, it usually encompasses services provided by scientists, engineers (including software engineers), architects and other professional roles. Some other fields that this class covers are outlined in the table below:

Scientific and technological servicesThis includes research and development services, laboratory analysis and technical consultancy.
Industrial analysis and research serviceThese services involve conducting studies, surveys and assessments for innovation.
Design servicesThis includes services related to industrial and graphic design, including architectural drafting.
Software development and ITThis includes software programming, cybersecurity, cloud computing and IT consultancy.
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What Are Some Key Registration Considerations?

Several key considerations come into play when seeking trade mark protection in Class 42. Some of these considerations are outlined in denial below: 

Clarity of Services

Trade mark class 42 is very broad in scope. This makes it even more essential to provide a clear description of the services offered. Some ways to achieve this include clearly outlining the nature of the services you provide. Further, you should ensure your trade mark accurately aligns with this class. You may want to seek assistance from a trade mark professional for this process. This will help minimise the chance of objections during the registration process, which can cause delays. 

Distinctiveness

Like all other trade marks, those in trade mark class 42 must be distinctive and capable of being distinguished from others in the same field. To this end, if you use generic or descriptive terms, you will likely face challenges in the registration process. For example, you cannot simply describe the services that you provide.

For example, consider you are an IT company specialising in cybersecurity services. In that case, you would face obstacles if you were seeking to register a mark under trade mark class 42 using a generic term such as “Secure IT”. This name is too generic and will not stand out to consumers.

Providing a Specimen

Applicants must provide a ‘specimen of use’ when submitting a trade mark application. This shows how the mark is used in connection with the goods or services on offer.

For example, an IT company registering a mark under class 42 might show the mark being used on their website. Alternatively, they may use product packaging as a specimen if the company distributes software products in physical form.

What is the Importance of Class 42 for Technology Businesses?

If you run a technology business, it is important you understand the significance of registering trade marks in Class 42. Some key advantages of trade mark registration for such businesses are outlined below:

  1. Provide protection: Registering trade marks in class 42 grants technology businesses exclusive rights to use their marks for their technology-related services. This protects their intellectual property and prevents unauthorised use by competitors. Over time, this enforces brand identity.
  2. Gain credibility: A registered trade mark signals to consumers that a technology business’s services meet certain quality standards. This leads to trust among customers and can encourage long-term loyalty.
  3. Access legal protection: Trade mark registration empowers businesses to enforce their legal rights and take action against unauthorised use of their mark. Businesses can use their mark to assert their ownership, protecting their market position and industry reputation.
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Key Takeaways 

To sum up, trade mark class 42 is a unique, multifaceted class that covers a wide range of professional services. If your business operates in the technical or professional services, you may want to assess this class and consider:

  • the purpose of trade mark classes;
  • the scope of trade mark class 42;
  • registration considerations; and
  • the importance of this trade mark class for technology businesses.

If you need help understanding whether trade mark class 42 applies to your business’s services, contact our experienced trade mark lawyers 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

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Emily Young

Emily Young

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