Don’t get caught in a “class” war

Trade marks in Australia are registered in respect of one or more classes of goods or services. The classes are established by an international convention to which Australia is signatory; goods are divided into 34 classes and services into 11 classes.

When looking to see whether a trade mark application conflicts with an earlier application or registration, many people only consider marks covering the same class(es) of goods or services. However, just because two applications cover different classes does not mean that the applications will not end up in a conflict.

In HamLon Pty Ltd v EziAdz Pty Ltd [2010] ATMO 9 the Registrar’s delegate had to consider whether an application for ECOPOP in relation to goods in class 16 was blocked by an earlier registration of an identical mark covering goods in class 20. Class 20 covers, amongst other things, furniture, and it was held that HamLon’s display equipment, stands and shelves were analogous to furniture and correctly classified in this class, despite the fact that HamLon’s ECOPOP range was made of cardboard from recyclable paper waste. Similarly, it was held that EziAdz’s countertop cardboard brochure holders and product dispensers were correctly classified in class 16, which covers a range of goods made from paper and cardboard.

Even though the two marks covered goods in different classes, the Registrar’s delegate went on to find that the goods in each case were designed to display the goods of other traders and were sold to the same customers for the same purposes. On this basis, the goods were found to be similar goods, and the application for ECOPOP in class 16 was refused.

To avoid problems of this sort, it is worth getting professional advice regarding the class(es) your goods or services may fall into, or potentially conflict with.