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Information About Trade Mark Applications


Set out below is some information about:


  1. choosing an optimal brand; and

  2. classifying your goods and services for a trade mark application


Also see Trade Mark Process for information about the trade mark application process in New Zealand and Australia.

Choosing a Trade Mark


From a trade mark registration perspective, it is important to choose a brand that is "distinctive".  This means choosing a brand that is not descriptive of your goods or services and that is otherwise distinctive in its own right.  For example, brands like "LEGAL SERVICES NZ" and "ELITE GARDENING" are generally not registrable as trade marks because they are descriptive of the services provided.  Other traders are likely to want to use the same or similar phrases to describe their own services and the Trade Marks Office will not grant you exclusive rights to use those phrases for this reason.  Other examples of wording that is not registrable as a trade mark include "NUMBER ONE", "OJ" for orange juice, "BYO" for restaurant services, and "e-COMMERCE" for business services.  Again, other traders are likely to want to use the same or similar phrases to describe their own goods or services and this is a ground for rejection.


Instead, it is best to choose a brand that does not directly describe your goods or services and that is easily recognisable by consumers and distinguishable from other providers.  Examples of brands that are considered sufficiently distinctive are NIKE (apparently the name originates from the Greek godness of victory and otherwise NIKE was not and is not descriptive of clothing or footwear), APPLE (apparently the name is inspired from one of Steve Jobs' frutarian diets and otherwise APPLE was not and is not descriptive of computer related goods and services), and GOOGLE (apparently the name originates from a misspelling of "Googol" (number one followed by one hundred zeros, which was apparently chosen to signify that the search engine was intended to provide large quantities of information) and otherwise GOOGLE was not and is not descriptive of search engine related services.)


Companies like NIKE, APPLE and GOOGLE all had to educate consumers about their brands to create a reputation and a connection in consumers' minds with the goods and services they provide.  That is the challenge.  However, once a brand's reputation is gained, it is a lot easier to protect and enforce that reputation than it is with a descriptive brand.  There will always be a level of confusion expected if you adopt a brand that is descriptive and similar to another, descriptive brand (for example, SUPER CARWASHING SERVICES and SUPERIOR CARWASHING SERVICES).  Consumers are likely to confuse the two brands.  However, adopting and registering a more distinctive brand can help to avoid confusion of this kind and is easier to enforce against other traders looking to leverage off your reputation.


We provide advice on the registrability of trade marks, as well as assisting with brand clearance searches and trade mark applications.  See our services and fees for more information and otherwise contact us to see how we can assist you. 



Classification of Goods and Services


All goods and services are classified in one or more classes, out of a possible 45 classes.

Set out below are the standard class headings for the 45 classes:


  • Class 1:  Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

  • Class 2:  Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

  • Class 3:  Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

  • Class 4:  Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.

  • Class 5:  Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

  • Class 6:  Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

  • Class 7:  Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.

  • Class 8:  Hand tools and implements (hand-operated); cutlery; side arms; razors.

  • Class 9:  Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

  • Class 10:  Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

  • Class 11:  Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

  • Class 12:  Vehicles; apparatus for locomotion by land, air or water.

  • Class 13:  Firearms; ammunition and projectiles; explosives; fireworks.

  • Class 14:  Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

  • Class 15:  Musical instruments.

  • Class 16:  Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

  • Class 17:  Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

  • Class 18:  Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.

  • Class 19:  Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

  • Class 20:  Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

  • Class 21:  Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

  • Class 22:  Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

  • Class 23:  Yarns and threads, for textile use.

  • Class 24:  Textiles and textile goods, not included in other classes; bed covers; table covers.

  • Class 25:  Clothing, footwear, headgear.

  • Class 26:  Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

  • Class 27:  Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

  • Class 28:  Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

  • Class 29:  Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

  • Class 30:  Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

  • Class 31:  Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt.

  • Class 32:  Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

  • Class 33:  Alcoholic beverages (except beers).

  • Class 34:  Tobacco; smokers' articles; matches.

  • Class 35:  Advertising; business management; business administration; office functions.

  • Class 36:  Insurance; financial affairs; monetary affairs; real estate affairs.

  • Class 37:  Building construction; repair; installation services.

  • Class 38:  Telecommunications.

  • Class 39:  Transport; packaging and storage of goods; travel arrangement.

  • Class 40:  Treatment of materials.

  • Class 41:  Education; providing of training; entertainment; sporting and cultural activities.

  • Class 42:  Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

  • Class 43:  Services for providing food and drink; temporary accommodation.

  • Class 44:  Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

  • Class 45:  Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.


We have extensive experience classifying specific goods and services in the correct classes and tailoring the claims made under trade mark applications to provide the broadest possible scope of protection in each instance.  See our services and fees for more information and otherwise contact us to see how we can assist you. 




Choosing a TM
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