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Trademark Class 45 - Is it the Right Trademark Class?

Discussion in 'Intellectual Property Law Forum' started by Ana13, 18 June 2014.

  1. Ana13

    Ana13 Member

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    Hi,

    We are looking at applying for trademark or trademarks for our new startup business. Our business will allow people to use our copyright, designs and patents for a fee, and for consultants to do work for a client using our designs. We were considering whether it is appropriate to trademark our name under Trademarks Class 45 (exploitation of IP, licensing of patents, etc), or whether the items under this class were intended for a different sort of business model altogether? In other words, we aren't sure if Class 45 is at all relevant to our type of business. We are anxious to trade mark our name under the appropriate categories as soon as possible, and have gotten stuck on this question.

    I would very much appreciate any help anyone is able to give, if they have any understanding of Class 45 and what sorts of situations it applies to. Thank you for any responses!
     
  2. Tim W

    Tim W Lawyer

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    The classification of trademarks refers is about describing the types of products
    on which those products might appear, not to the nature of the entity that owns them.

    You say you want to register a trademark for your business.
    Well and good.
    But don't confuse that with the nature of your (so to speak) "trading stock".

    In respect of the artistic works (that's an IP term, right there...)
    in which you propose to deal, you are more likely to be in the realm of
    copyright than of trademarks, and almost certainly not patents.

    I suggest therefore that you...
    1. Decide if you want to be a sole trader, a partnership, or a corporation.
      Get legal and accounting advice about which suits you and your colleagues better.

    2. Register the business name with ASIC in the usual way.
      Your solicitor can also help with this.

    3. If you become a corporation, assign the copyright (and all other rights) in the IP to the company.
      Most any solicitor can help with this.

    4. If you become a partnership, then make a proper partnership agreement.
      Include in that agreement express terms relating to who owns how much of what,
      how it will be controlled, and how the revenue will be dealt with, and how disputes will be resolved.
      While in theory, and commercial solicitor could do this,
      it really is a job for a solicitor with significant experience in IP.
     
  3. Worldly1

    Worldly1 Well-Known Member

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    Hi Ana,
    Which state or territory are you in?
     
  4. Ana13

    Ana13 Member

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    Thanks for the replies!

    We are a company, and we will be engaging a patent and trademark attorney at some point to work on some of the more involved IP-related stuff. I guess I've just been looking for general information on Class 45 and what sort of business items like 'exploitation of patents' and 'licensing of patents', etc, would apply to, and therefore to decide whether it has any relevance for us. My Googling on this point hasn't been too fruitful.

    Worldly1, we are in Victoria.
     
  5. John R

    John R Well-Known Member

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    Hi Ana,
    1. It's a highly technical document but IP Australia's Trade Mark Examiners Manual features a section (Part 14 - Classification of Goods and Services) that sets out when/why a specific class/es should be used for a trade mark.
    2. Before meeting with an IP lawyer, you may find it a useful exercise to search IP Australia's database (ATMOSS) for trade marks held by any competitors - and specifically, the class/es and descriptions they have used for their trade marks.
    Hope this helps!
     
    DennisD likes this.
  6. Tim W

    Tim W Lawyer

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    What John R said.
    Also, you probably want an IP law firm, not a Patent Attorney (although many firms provide both).
     
    John R likes this.
  7. Ana13

    Ana13 Member

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    Thanks for the advice! I appreciate it. We will have to look into it further.
     
  8. DennisD

    DennisD Well-Known Member

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    Hi Ana

    As explained in point 2. of John R's response above, when you follow the link to ATMOSS you can conduct trademark searches

    You can select the 'Enter as guest' option and it is common to apply at least three tests (for 3 Part word, 5 Phonetic Word and 8 Fuzzy Word) in the dropdown box

    Hugh
     
    Tim W likes this.
  9. MagnumIP

    MagnumIP Member

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    Hi Ana13
    Sorry for late response, I just noticed your post. Licensing of copyright and intellectual property does fall under class 45. However, if your core business is providing logos and designs to businesses (utilising consultants and freelancers) then you're better to be registered in class 42 for graphic design-type services.
    Hope this helps!
     
    John R likes this.

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