Key takeaways
Real estate developers should ensure their trade mark applications cover not only land development and construction services (Class 37), but also any related financial, real estate, engineering, design, planning or short-term accommodation services in Classes 36, 42 and 43.
A trade mark registered for land development and building services may not give the registered owner exclusive rights to prevent others from using or registering the same mark, or a similar mark, for building materials or prefabricated building structures.
Strategic class selection and a clear understanding of overlap (and dissimilarity) between goods and services across different classes can reduce the risk of disputes and strengthen brand protection and enforcement across the property development lifecycle.
When it comes to protecting a real estate development brand, choosing the right description of goods and services is critical. The Nice Classification system, adopted by Australia and New Zealand currently categorises goods and services into 45 classes for trade mark registration purposes, and selecting the wrong goods and services can leave key aspects of your business unprotected. For real estate developers, classes relating to real property, construction, planning, design and temporary accommodation are often the most relevant, but the boundaries between different classes can be less obvious than they seem.
In this article, we outline the classes most commonly claimed in trade mark applications filed by real estate developers, explore an interesting decision by the Trade Marks Registrar on dissimilarity between goods and services in different classes, and explain what this means for businesses operating in the property and land development sectors.
Trade mark classes: do they matter?
When preparing a trade mark application, it is essential for the applicant to clearly describe the goods and services intended to be offered under the trade mark. While choosing the correct classes remains important when filing a trade mark application, businesses should bear in mind that the scope of exclusive rights afforded by a registered mark is defined by the actual description of goods and services used in the application, rather than the class in which each nominated product or service belongs. A new edition of the Nice Classification is published every 5 years whereby goods and services may be transferred between existing classes, however the classes themselves do not determine a registered owner’s ability to challenge a third party’s use or registration of a similar mark.
Most common trade mark classes nominated by the real estate and development sector:
| Class | What is included? | Services typically registered |
|---|---|---|
| 36 | Activities relating to finance, insurance and real estate transactions. | Sale, purchase and leasing of real estate; property management; and real estate financing. |
| 37 | Activities relating to construction, installation, repair and maintenance, as well as activities in mining, oil and gas extraction. | Real estate development; building and construction; and building project management (construction supervision). |
| 42 | Activities relating to scientific or technological services; technical and industrial design; and services relating to computer hardware and software. | Construction drafting; civil engineering; and design and planning of real estate developments. |
| 43 | Activities relating to the provision of temporary accommodation and the provision of food and drink. | Hotels, holiday apartments and other forms of short-term accommodation, and hospitality services offered at such premises. |
Spotlight on a Trade Marks Registrar decision on cross-class dissimilarity
In Western Australian Land Authority [2014] ATMO 10, the Applicant (being the Western Australian Government’s land and property developer) sought to register a stylised logo in classes 16, 35, 36 and 37, including real estate development and construction services in class 37. During examination, the examiner at IP Australia objected to the registration of the logo on the basis that it was deceptively similar to two prior registered marks, and the Applicant’s goods and services overlapped with those claimed under the prior registrations. Relevantly, the examiner was of the view that the Applicant’s real estate development and construction services were closely related to ‘apartments (metallic structures or buildings)’ claimed in class 6 of one of the prior registrations.
At the conclusion of a hearing, a Delegate of the Trade Marks Registrar held that ‘apartments (metallic structures or buildings)’ were not sufficiently similar or closely related to real estate development and construction services.
The Delegate agreed with the Applicant’s submissions that “A consumer would not expect there to be any connection between a business that provides metal building materials and a land developer such as the Applicant … These traders operate in distinct trade channels from one another.” Accordingly, the Delegate withdrew the examiner’s objection based on that prior registration.
What does this mean for the real estate and development sector?
The Trade Marks Registrar’s decision has ramifications for registered trade mark owners in the real estate and development sector, looking to enforce their exclusive rights against third parties. If they hold a registered trade mark covering real estate development and construction services in class 37 (and nothing else), it would be difficult to oppose a third party’s trade mark application for the same mark (or a deceptively similar mark) covering pre-fabricated apartments or other building structures, by arguing that the registered class 37 services are closely related to pre-fabricated building structures. Equally, it would be difficult to bring a trade mark infringement claim against a third party offering the same pre-fabricated building structures under that mark (or a deceptively similar mark) on that basis alone.
However, registered trade mark owners may be able to oppose a third-party application on other grounds, or bring a claim against third parties for statutory misleading or deceptive conduct, or the tort of passing off. To understand what options are available, contact our Intellectual Property, Technology and Cyber Security team.