Using IP Australia’s Trademark Pick List
In an earlier article we examined the concept of trademark classes, and their role in helping trademark examiners (and trademark applicants) to identify registered trademarks that might prevent a new trademark from being registered.
Identifying the correct trademark class is difficult
As discussed in this earlier article, trademark applicants must identify one or more classes to which their goods and services belong. This can be a difficult task, especially for the novice. There are 45 classes that overlap and each class has thousands of possible goods and services listed in it.
The consequence of identifying the wrong trademark class
If an application does not identify the appropriate class for a particular trademark, the Examiner will issue an objection on ‘formal grounds’ which will prevent the trademark from being registered.
This will delay the acceptance of the trademark application until the objection can be overcome, and involves the wasted time and effort (and possibly expense) in doing so.
Typically, the objection is overcome by amending the application to identify the class that the Examiner has identified as being relevant. Less commonly, submissions can be made to the Examiner which may persuade them to withdraw the objection.
IP Australia’s solution: The Pick List
IP Australia has pioneered a solution which can help to avoid these classification errors. It involves allowing trademark applicants to pick from an electronic list of goods and services, and using a software application to ensure the application identifies the correct trademark class or classes. It refers to this as the ‘Goods and Services Pick-List’.
According to IP Australia, the official Goods and Services pick-list is an electronic tool designed to help you identify the classes of goods or services to which your trademark applies. The pick-list is an optional component of the online filing facility. If you use the pick-list when making your application it will automatically classify your goods and services so that they are in the correct class at the time of filing your application. Your filing fees will be automatically calculated and there won’t be any classification errors preventing acceptance of your trademark application, though there may be other substantive issues raised. Using the Goods and Services pick-list also saves you money as a discount applies to applications filed using the pick-list facility.
These are undeniable advantages, especially for applicants who are filing without the help of a trademark professional. However, as with any system, there are some drawbacks to relying on it too heavily. We discuss these drawbacks in another post where we compare the pick-list with having a custom trademark description drafted by a trademark professional.