WNA Blog

Thu 1 Dec 2016

How Much Trademark Protection Does a Company Need?


Public Relations & Media Services

Many of our clients assume that they only require one trademark to protect their business brand.  That is not always necessarily true, because when you apply for a trademark you need to identify the classes of protection you require for the word or the logo.

In Australia and New Zealand, there are forty-five classes in total that you may apply for protection. Depending on your business you may find that you may require more than one class which means you will own a trademark under multiple classes which are each a trademark in its right. Classes one to thirty-four are there to protect GOODS (products) and classes thirty-five to forty-five are there to protect various SERVICES a firm may offer.

A recent example, one of our client owns an electrical engineering firm; he thought he needed one class for protection. However when we researched what the firm offered, we found that the company not only designs the plans for electrical engineering work, they also offer construction services and performed maintenance services as well.  Using a fictitious ABE Electrical Engineering company name to demonstrate:

abe-electrical-engineering logo

TRADEMARK OPTION 1: Company name trademarked in a word form for electrical engineering (design) class (37)  Apply for: ABE (word) in class 37

TRADEMARK OPTION 2: Company name trademarked in a word form for electrical engineering (construction & maintenance) class (42)  Apply for: ABE (word) in class 37

Note: We recommend that ABE  to be trademarked, as it’s the distinctive part of the brand. Electrical Engineering is descriptive words. You can add them in the trademark, however, in this case, we think ABE is the main brand.

TRADEMARK OPTION 3: Company name trademarked inlogo form for electrical engineering (design) class (37)  Apply for:  ABE Electrical Engineering logo in class 37

TRADEMARK OPTION 4: Company name trademarked in a logo form for electrical engineering (construction & maintenance) class (42) Apply for:  ABE Electrical Engineering logo in class 42

Moreover, to make things more interesting, the electrical engineering firm have invented a “switching box” for use in their field, and they wish to brand that switching box, then they would add the following trademark protection to their Intellectual Property portfolio.

TRADEMARK OPTION 5: Company name trademarked in the word form for “switching box used for electrical engineering” class (9) Apply for: Eg. ABE (word) in class 9

TRADEMARK OPTION 6: Company name trademarked in the logo form for switching box used for electrical engineering” class (9) Apply for: ABE Electrical Engineering(logo) in class 9 

The number of classes you need TO PROTECT your BRAND depends on what you offer (product or service), that’s the simple answer!


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