Key takeaways
In trade mark applications, the scope of protection is determined by the description of goods and services, not simply the Nice class selected, making precise drafting critical for mining equipment manufacturers.
Goods listed in the same trade mark class are not automatically considered similar for enforcement purposes, as confirmed in Kaeser Kompressoren SE v Atlas Copco Drills AB, where different types of industrial equipment in Class 7 were found dissimilar.
Mining equipment businesses should carefully tailor their trade mark specifications to reflect intended industries and use cases, as vague or overly general descriptions may limit their ability to oppose competitors 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? |
|---|---|
| 6 | |
| 7 | |
| 9 | |
| 12 | |
| 37 | |
| 42 |
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 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 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, and 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.
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.
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The author would like to acknowledge the research assistance provided by Degenhard Beschel, Vacation Clerk, during the development of this article.