Every trade mark registration is tied to a list of goods. The Trade Marks Act (Chapter 385) organises those goods into prescribed classes, and the class you choose defines the boundary of your rights.
Sections 22 and 32(3) — one class, one application
A trade mark shall be registered in respect of any or all of the goods comprised in a prescribed class of goods.
An application shall not be made in respect of goods comprised in more than one class.
Read together: you may claim as much or as little of a class as you like, but a single application cannot straddle two classes. A business whose mark is used on both a product and a service must file separate applications — each with its own fee, its own examination, its own opposition period and its own renewal.
Under the section 1 definition, “goods” includes services. So service marks are classified and registered in exactly the same way. Where goods fall to be compared with services, the expression “of the same description as” is construed as “closely related to” — which matters under section 24 and in infringement.
Section 22(2) — the Registrar decides, and that is final
Where a question arises as to the class in which goods are comprised, that question shall be decided by the Registrar, and the decision is not subject to appeal and shall not be called in question in an appeal or other proceedings under this Act.
This is a striking provision. Almost every other decision of the Registrar carries a right of appeal to the National Court — sections 11(2), 12(6), 28(3), 33(7), 40(8), 62(2) and 100(5) all say so. Classification does not.
The privative words are confined to the question of class. They do not oust an appeal against a refusal to accept under section 33(2)(a), or against acceptance subject to conditions or limitations. Nor can a provision of an ordinary statute exclude the National Court’s section 155(4) jurisdiction to do justice, or judicial review for want of jurisdiction — though a court will give a classification decision within jurisdiction very wide latitude.
The practical answer is not litigation. It is to ask the Registry which class applies before filing, and to specify the goods carefully.
Drafting the specification of goods
The list of goods in the application is the boundary of the registration. It governs:
- Registrability — section 24 compares the mark against earlier marks for the same goods or goods of the same description.
- Infringement — section 53(1) reaches use in relation to goods in respect of which the trade mark is registered.
- Vulnerability — section 14 allows removal for non-use in respect of any of the goods for which the mark is registered. A specification wider than the actual business invites a partial removal.
| Approach | Advantage | Risk |
|---|---|---|
| Narrow — only goods actually sold | Safe against non-use removal; easier to get past section 24 | Gaps a competitor can occupy in the same class |
| Whole class | Widest infringement reach while it stands | Exposed to partial removal under section 14 for the unused goods; more likely to hit an earlier mark |
| Actual goods plus close expansion | Room to grow; still defensible on use | Requires the expansion to happen within three years |
Section 11(1)(d) allows the specification to be narrowed later, but expressly not in any way so as to extend the rights given by the registration. Widening means a fresh application, with a later date.
Section 100 — when the classification itself changes
Classification systems are revised. Section 100 provides for the Register to be adapted:
- (1) The regulations may provide for amending the Register — making, expunging or varying entries — to adapt the designation of goods or classes to an amended or substituted classification.
- (2) Such an amendment shall not add goods or classes to those already registered, or antedate a registration.
- (3) That restriction does not apply where the Registrar is satisfied that complying with it would involve undue complexity and that the addition or antedating would not affect a substantial quantity of goods and would not substantially prejudice the right of any person.
- (4) A proposal must be notified to the registered proprietor, advertised as prescribed, and may be opposed before the Registrar by a person aggrieved on the ground that it contravenes the section.
- (5) A person aggrieved by the Registrar’s decision may appeal to the Court.
Section 22(2) — which class these goods fall into — is unappealable. Section 100(5) — how the system is adapted, and whether the safeguards in section 100(2) were respected — is appealable, and can be opposed first. The Act protects proprietors against the reclassification of their existing rights, but not against a disagreement about where a particular product belongs.
Practical points
- Search class by class. A conflicting mark in another class will not block you under section 24 unless the goods are of the same description — or, across the goods and services divide, closely related.
- Budget for multiple filings if you trade in more than one class. Each is a separate registration.
- Keep the specification honest. The wider it is, the more of it you must be able to prove use of.
- Use section 34. If part of your mark is separately registrable, or you need to split goods, a further application under section 34 can be directed to take the original lodgement date.
- Record the goods you actually sell, with dates, from day one. That record answers a section 14 attack years later.
Sources
- Trade Marks Act (Chapter 385) — ss 1, 11, 14, 22, 24, 32, 33, 34, 53, 100
- Constitution — s 155(4)
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.