Key takeaways
In trade mark applications, the scope of protection is determined by the description of goods and services, not simply the trade mark classes selected, making precise drafting critical for mining equipment suppliers and manufacturers.
Depending on their precise characterisation, industrial machines and mining machines may not be considered sufficiently similar for opposition or enforcement purposes, even though they are in the same trade mark class and are often supplied to the same sector.
Mining equipment businesses should carefully tailor their trade mark specifications to reflect intended industries and use cases, as overly general descriptions may limit their ability to oppose competitors’ trade mark applications or enforce their rights.
When it comes to protecting a mining equipment 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 mining equipment manufacturers, classes relating to 6, 7, 9, 12, 37 and 42 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 mining equipment manufacturers, explore an interesting decision by the Trade Marks Registrar on dissimilarity between types of equipment in the same trade mark class, and explain what this means for businesses supplying equipment to the mining sector.
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 mining equipment manufacturers:
| Class | What is included? | Goods and services typically registered |
|---|---|---|
| 6 | Ores; common metals and their alloys; construction materials of metal; transportable metal buildings and platforms; metal containers; and small items of metal hardware. | Metal components for the construction of mines; prefabricated metal buildings or structures for mine sites; reinforcing materials made of metal; metal containers for compressed air, gas or fluid. |
| 7 | Machines; power-operated tools; equipment for earthmoving, construction, oil and gas extraction and mining; and motors and engines (except for land vehicles). | Mining machines and apparatus; drilling rigs, floating or non-floating; ground boring machines; conveyors for mining; industrial robots; excavators; bulldozers; cranes; automated machines for load handling. |
| 9 | Scientific, photographic, measuring, inspection and data-recording equipment; computer hardware and software. | Downloadable software for the control, monitoring or maintenance of mining equipment; electronic apparatus for the remote control of mining equipment; downloadable publications including operating manuals for mining equipment. |
| 12 | Vehicles; parts and fittings for land vehicles; machines and apparatus for transporting people or objects. | Mining vehicles; remotely controlled land vehicles; vehicles carrying machinery for drilling; trailers; gearboxes; parts and fittings for vehicles and wheeled mining machines. |
| 37 | Mining, oil and gas extraction services; rental of mining equipment; installation and maintenance of mining equipment. | Installation, assembly, repair or maintenance services in the field of mining; mining extraction and drilling services in the nature of rental of mining and drilling equipment; rental, repair or maintenance of mining vehicles. |
| 42 | Scientific or technological services; technical and industrial consultancy relating to mining equipment; and services relating to computer hardware and software. | Technical or industrial research, design and consultancy relating to mining equipment; remote diagnostic and monitoring of mining equipment; testing of mining vehicles for roadworthiness; software-as-a-service (SaaS) in the field of mining. |
Spotlight on a Trade Marks Registrar decision on dissimilarity between goods in the same class
In Kaeser Kompressoren SE v Atlas Copco Drills AB [2018] ATMO 77, the Applicant, being a manufacturer of mining equipment, sought to register a word trade mark in classes 7, 12 and 37, including for mobile drilling rigs in class 7, vehicles and conveyances for mobile drilling rigs in class 12, and installation and repair services for mobile drilling rigs, remote control apparatus and vehicles and conveyances in class 37. The Opponent, being a manufacturer of air compressors, opposed the registration of the Applicant's mark on a number of grounds, including that the Applicant’s mark was deceptively similar to the Opponent's registered marks in class 7, covering compressors, dryers, air filters and hydrocarbon absorbers, all for industrial use.
The Opponent argued that its registered goods in class 7 were similar to the Applicant’s goods, because the Opponent’s compressors were adapted for use on, or in conjunction with, drilling rigs. Further, the Opponent claimed that approximately 36% of its Australian customers were in some way related to the mining sector, and that the Applicant and Opponent competed in tendering and quoting in 85% of all projects, including in the mining sector.
At the conclusion of a hearing, a Delegate of the Trade Marks Register held that the Opponent’s “compressed air refrigerated dryers, air filters, desiccant dryers and hydrocarbon absorbers for industrial use” in class 7 were not similar to the Applicant’s mobile drilling rigs in the same class. Despite the Opponent’s claim that its compressors were adapted for use on drilling rigs, the description of goods used for its trade mark registrations merely claimed that those goods were “for industrial use”. Accordingly, although the two sets of goods were in the same trade mark class, and the parties actively competed in the same sector, the Delegate found no clear or obvious similarity or relationship between the two sets of goods.
What does this mean for mining equipment manufacturers?
The Trade Marks Registrar’s decision has ramifications for equipment manufacturers with registered trade marks, looking to oppose a competitor's trade mark application, or enforce their exclusive rights against competitors in the mining sector. Even if two products are classified in the same trade mark class, and are capable of being used in conjunction with each other in the same industry, it does not necessarily mean that they are sufficiently similar for opposition or enforcement purposes. This is especially the case where there is no obvious similarity or relationship between the trade mark owner’s registered product and the competitor’s product, and the description of goods used in the trade mark registration does not explicitly clarify this relationship. In this situation, it would be difficult for the registered trade mark owner to successfully oppose a third party’s trade mark application, or to bring an infringement claim against a third party, on the basis of deceptive similarity between the marks, which would require establishing similarity between the registered goods and the third party’s goods.
This decision highlights the importance of carefully crafting the description of goods and services in a trade mark application, to ensure that the wording highlights particular industries or use cases where the goods and services are intended to be deployed. This is particularly salient, where the relationship between the claimed goods and services and the specific industries or use cases, is not immediately obvious. With careful drafting, it is possible for the same trade mark specification to afford both broad protection for the claimed goods and services in a manner that is not limited by field or use, as well as specific protection for particular markets or uses.
At HopgoodGanim, our expert Intellectual Property, Technology and Cyber Security team works closely with our clients to ensure that we have a clear understanding of each client’s current offering and future pipeline of products and services. Every trade mark application is crafted with care, to ensure that the description of goods and services strikes the right balance between affording flexibility in the use of the mark through the use of broad, unqualified wording, and affording protection in niche markets through the use of specific examples.
The author would like to acknowledge the research assistance provided by Degenhard Beschel, Vacation Clerk, during the development of this article.