NSW E-commerce Trademarking Question

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AmadouD

Member
13 November 2020
3
0
1
Hi There!

I am planning to trademark a name of a new e-commerce focused business selling a private label brand of men’s grooming products.

The incorporated business is based in Australia with the country being my initial and primary market focus for the business.

Our first product will be a hair styling & conditioning cream, followed eventually by a suite of finishing products ranging from body lotion to facial scrubs, colognes etc.

I am trying to navigate the Australian Trademarks platform to file the paperwork myself, but I am concerned about ticking the right classifications fo the business.

Based on my initial review, I believe the trademark should be focused on Class 3 goods. The list of which I initially chosen are:
1. Products for setting the hair
2. Styling lotions for the hair
3. Moisturising skin lotions (cosmetic)
4. Facial scrubs (cosmetic)
5. Facial creams (cosmetic)
6. Non-medicated facial lotions (cosmetics)
7. Skin Care oils (cosmetic)

My question is: Should I classify the business under all of these sub-sets or are there a handful which will cover my trademark for the long run?

If the more sub-sets I have the better, which other sub-sets in class 3 should I have?

Last, because I will be an ecommerce retailer, should I extend the trademark to also cover Class 35 as a Retail Service as well?

I’ve taken a screenshot of what I’m considering here for review.
business.gov.au  Trade Mark Assist  Search for Goods and Services.png

Thank you in advance!
 

Docupedia

Well-Known Member
7 October 2020
35
1
124
The class sub-sets are simply descriptors of what you’re doing. It’s up to you to choose what fits best – you still have the registration of the class overall. Just work through the picklist and whittle it down.

Be aware you’re limited in the number of sub-sets you can choose (maximum of 100, I think).

Classes 1 – 34 are goods, classes 35 – 45 are services. Registering in multiple classes increases your cost of trade mark registration. Not only is registering in classes you don’t actually operate in wasteful due to cost, but failing to use your trade mark in the classes you register for leaves it open to attack. So, unless your mark will be used for the service aspect of retail (as opposed to distinguishing just the goods themselves), class 35 is not likely to be relevant.
 

AmadouD

Member
13 November 2020
3
0
1
The class sub-sets are simply descriptors of what you’re doing. It’s up to you to choose what fits best – you still have the registration of the class overall. Just work through the picklist and whittle it down.

Be aware you’re limited in the number of sub-sets you can choose (maximum of 100, I think).

Classes 1 – 34 are goods, classes 35 – 45 are services. Registering in multiple classes increases your cost of trade mark registration. Not only is registering in classes you don’t actually operate in wasteful due to cost, but failing to use your trade mark in the classes you register for leaves it open to attack. So, unless your mark will be used for the service aspect of retail (as opposed to distinguishing just the goods themselves), class 35 is not likely to be relevant.
Thank you so much for this feedback!
One follow up question: should I wait until my designer creates the brand logo to register both the logo and name together?
 

Docupedia

Well-Known Member
7 October 2020
35
1
124
Unless you want to keep track of two renewal dates I'd suggest lodging both on the same day.
 

AmadouD

Member
13 November 2020
3
0
1
Thank you so much again. And one other follow up from my designer:

If we choose to add the name of the company within the logo design, does it have to be exactly the same name trademarked or could it be a variation?

reason is, there is a company operating under the shortened name I’m calling mine, but in a completely unrelated field. I’m wondering if the IP body would reject it.
 

Docupedia

Well-Known Member
7 October 2020
35
1
124
Ive never seen it done. They’ll be two different marks so you might be able to get them both through. However, the purpose of trade marking is to create a strong, protected brand. Doing as you suggest might water down that strength.