Retail – it’s all about class
More than ever the race is on to fence off names and words. This is particularly so in an online world where many services providers such as Google, Bing, Twitter, eBay and FaceBook generally require a trade mark registration as a prerequisite to challenge third party names.
Online retail services may be experiencing fast explosive growth. However, the system for registered protection of trade marks for retail services (whether online or not) has moved very slowly over the years and can be confusing. Similarly trade mark protection of online businesses has also been inconsistent and very confusing.
Trade mark classes
An application for registration of a trade mark may be made in respect of goods and / or services. In Australia (and 147 other countries) goods and services are classified using the Nice Classification, which lists 45 classes of goods and services, thousands of specific types in each class and detailed descriptions of those.
Although the single system provides some uniformity, each country still does have its own idiosyncrasies. Also, it has taken some time to clarify the correct classification of goods and services provided by internet businesses.
Retail services – a troubled trade mark history
In the class system, retail services have routinely been treated as the untouchables.
- Historically it was only possible to register a trade mark for goods and it was not possible to register a trade mark for any services. Some countries still do not provide registered protection for services per se.
- Trade mark legislation eventually allowed for registration of trade marks in connection with services and in some countries registration for retail services was specifically permitted.
- Notably China still does not accept applications for retailing services. Even the retail obsessed Japan only permitted registration of retail services as recently as 2007.
Why the problem with retail services?
Many countries regarded retail services as indefinite and merely ancillary to the business of trading goods in stores. Therefore, in order to obtain at least some form of protection, many traders obtained registration for the kinds of goods they were selling, for example, clothing, wine or sporting goods (all of these goods fall in different classes). However, this approach is problematic as they are not strictly using the trade mark in connection with the goods and any registration may be vulnerable to removal for non-use.
Even in countries where protection is permitted there are varying approaches as to how these services are to be claimed. Some countries allow a broad claim for simply “retail services”, whereas other countries require limitations in the form of the goods, for example “retail services in respect of clothing, footwear and headgear” or “in relation to the specific nature of the service, by for example using phrases such as ‘retail services of a department store’, ‘retail services of a supermarket’ etc”.
Some countries even require the cumbersome phrase “the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase these goods”.
Fortunately in Australia “retail services” are clearly permissible for registered trade mark protection.
However, before you launch into an application, there are some issues to consider.
What is being provided?
Protection of anything internet related is confusing given that the Nice Classification provides little guidance. For many years people would file for goods and services, such as software (Class 9), internet access provider services (class 38) and general computer, computer programming and computer software-related services such as creating and maintaining web sites for others or hosting web sites for others as well as search engine services (class 42) as these seem to capture the flavour of an online business.
However, the correct approach is to identify precisely what is being provided, rather than the means. For example, if you are selling a variety of goods over the internet, it is appropriate to seek protection for “retail services”.
Consider whether you would be concerned by a trader producing and selling goods under the same brand as your retail brand. For example, online retailer AMAZON may be concerned by a trader producing and selling AMAZON branded DVDs.
A trade mark registration for AMAZON covering retail services in Class 35 may not necessarily block a third party application to register AMAZON for DVDs in Class 9, at least insofar as the Trade Marks Office is concerned and the retailer may need takes steps to challenge registration and use in connection with DVDs.
In this regard it is appropriate to consider what classes are associated with your class of interest. The Trade Marks Office sorts classes into groups of associated classes. These are classes where it is not only likely but probable that similar or related goods or services will be found.
In relation to retailing services (class 35) only three classes of goods (classes 12 (motor vehicles), 14 (jewellery) and 25 (clothing)) are associated with class 35. The Trade Marks Office will only consider prior Class 35 marks in connection with applications covering those classes of goods.
The Trade Marks Office has nominated these classes because consumers have come to expect that in these cases the goods themselves and their retail or wholesale typically originate from the same trade source.
Therefore, carefully consider a strategy of obtaining registered protection beyond retail services for precise goods of interest or to allow for possible expansion of the retail brand. Comprehensive searches in various classes will assist in identifying what you can and should file for.
Registration of a trade mark can seem straightforward. However, strategic analysis is warranted before filing a trade mark application in order to obtain the best protection.
Lance Scott is a patent attorney at Gestalt Law, Sydney www.gestalt.com.au