Key takeaways
Trade mark protection is defined by the description of goods and services, not the class number, meaning poor drafting can leave critical parts of a business exposed.
A trade mark registered for downloadable software may nevertheless give the registered owner exclusive rights to prevent others from using or registering the same mark, or a deceptively similar mark, for financial services including currency trading services and crypto exchange services.
Even where goods and services fall into different classes, they may be considered closely related where one is integral to the delivery of the other, particularly in technology-driven industries.
When it comes to protecting a brand in the technology and digital economy sector, 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 technology businesses or those embracing the digital economy, classes relating to software development, hardware manufacturing, artificial intelligence and IT consultancy 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 technology businesses and those embracing the digital economy, explore an interesting decision by the Trade Marks Registrar on overlap between goods and services in different classes, and explain what this means for businesses operating in the technology and digital economy 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 the technology and digital economy sector:
| Class | What is included? | Goods and services typically registered |
|---|---|---|
| 7 | Machines; power-operated tools; and motors and engines (except for land vehicles). | Robots and robotic arms, including those with artificial intelligence, for industrial, mining, construction, agricultural, logistical or housekeeping use; control mechanisms for robotic machines, including for those remotely optimised and monitored via Internet of Things communications. |
| 9 | Scientific, photographic, measuring, inspection and data-recording equipment; computer hardware and software. | Downloadable software; chatbots; computer hardware; mobile communication devices; smartwatches; VR headsets; Internet of Things gateways; humanoid robots; robots for use in scientific research; crypto assets. |
| 35 | Business management, organisation and administration services; marketing and advertising services; retail and wholesale services. | Computer data management services; commercial consultancy in the field of blockchain technology and cryptocurrency; retail and wholesale services for computer software; providing an online marketplace for buyers and sellers of goods and services, including digital assets. |
| 38 | Telecommunication services; teleconferencing services; data transmission services; providing access to a computer network. | Providing access to online computer databases; providing access to blockchain networks; streaming of digital media; satellite transmission of sounds, images, signals and data; geolocation services; communication services for the Internet of Things. |
| 42 | Scientific or technological services; technical and industrial analysis, research and design services; services relating to computer hardware and software. | AI as a service (AIaaS); blockchain as a service (BaaS); platform as a service (PaaS); software as a service (SaaS); cloud computing; hosting of websites and software platforms; computer hardware and software design; computer and data security services. |
Spotlight on a Trade Marks Registrar decision on cross-class overlap
In AUDC Pty Ltd v AudD LLC [2025] ATMO 199, the Applicant, the developer of an application programming interface for music recognition, sought registration of a word mark in classes 9 and 42, covering a range of software goods and services, including application software in class 9 and software as a service in class 42. The Applicant’s trade mark application was opposed by the Opponent, a fintech company specialising in blockchain technology, on the basis of the Opponent’s prior registered trade mark in class 36, covering a range of financial services including those for the trading of currencies and crypto assets.
While the Delegate of the Trade Marks Registrar held that the Applicant’s class 42 software services were not the same as, or similar to, the Opponent’s services, the Delegate concluded that the Applicant’s class 9 goods, including application software, were broadly speaking, closely related to the Opponent’s services for “financial affairs; financial exchange of crypto assets; financial exchange services; currency exchange services; trading in currencies; brokerage of currency; buying and selling currency” in class 36.
When determining whether the relevant goods and services were closely related, the Delegate asked two key questions, namely:
- are the goods a necessary adjunct to a particular service; and
- would the public expect the same business to provide both the service and the goods, noting that the relationship between different goods and services shifts over time with market and technological development.
Despite the fact that the description of the Opponent’s financial services did not mention use of software, the market reality, as accepted by the Delegate, was (and still is) that application software is a necessary adjunct to virtually all of the Opponent’s financial services. In particular, the Delegate noted that, currency trading services “in this age absolutely depend on application software”, and that buying and selling currency occurs through goods and services which consumers would expect to originate from the same business. Accordingly, given that the two trade marks were substantially identical, and covered closely related goods and services, the Opponent was successful in opposing the registration of the Applicant’s trade mark.
What does this mean for the technology and digital economy sector?
The Trade Mark Registrar’s decision has ramifications for software developers and other technology businesses looking to secure registration of their brands and avoid infringement of third-party rights. Trade mark applicants seeking to protect their brands for downloadable software in class 9 (and nothing else), should be prepared to address objections raised by examiners at IP Australia. They may also face third-party oppositions or infringement claims based on third-party trade marks covering currency trading and crypto exchange services in class 36, even where the third-party mark does not specifically cover the use of software in the provision of those financial services.
At the same time, businesses with a registered trade mark covering downloadable software in class 9 (and nothing else) may still have grounds to oppose a third party’s trade mark application for currency trading and crypto exchange services in class 36. They may also be able to bring a trade mark infringement claim against a third party offering those services by adopting the Delegate’s reasoning in this decision.
To understand what options are available, contact our Intellectual Property, Technology and Cyber Security team.