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Foreign attorneys will be aware of how Australian trade mark owners file comparatively broad claims for trade mark protection.  Many Australian traders file broad claims and a long laundry list of goods and services.

Preparing a claim for trade mark protection is a delicate balancing act, and in this note, we outline the Australian context in which trade mark goods and services claims are prepared and some resultant problems with “software”.

All goods and services

Regulation 4.4 of the Trade Marks Regulations  1995 (the TM Regs) prohibits the expressions “all goods”, “all services”, “all other goods”, and “all other services”.

NICE classification

As far as practicable, IP Australia prefers that an applicant specify the goods and/or services for which registration is sought in terms appearing in the NICE Classification or Office Determinations (subreg 4.4(6) TM Regs).  These listings are available on the IP Australia website.

Class headings

A trade mark application claiming a NICE Classification class heading will typically not encounter an objection or query from IP Australia.

However, the historical practice of claiming a class heading is unwise.  Case law has clarified that a claim for the class heading does not automatically cover all goods and services in a class and that the class heading must be interpreted as being limited in scope to the goods or services covered by the generic descriptions included in the class headings.[1]

Therefore, goods or services of actual interest may be inadvertently excluded by claiming a class heading.

Specificity

The Registrar has the discretion to query broad claims for goods and services.[2] However, the Registrar will not usually exercise this discretion in examining a trade mark application.

Therefore, provided that the goods or services claim accords with the NICE Classification or IP Australia Office Determinations, no query will be raised in relation to the claim.  Consequently, it is easy for Australian traders to protect trade marks using broad claims and/or a long laundry list of goods and services.

The position is different in New Zealand.

When examining a specification of goods or services, an Intellectual Property Office of New Zealand (IPONZ) examiner considers whether the applicant has applied for an unrealistically broad range of goods or services. A concern will be raised where the examiner considers the specification applied for is too broad or that it is commercially unrealistic that the applicant would use the mark in relation to that broad range of goods or services.[3]

The problem with “software”

The downside with broad goods and services claims is apparent in relation to claims for software.

For example, “computer software” in class 9 is an acceptable goods claim in Australia and will not attract any objection or formalities query.  However, such a broad claim means that the trade mark increases the likelihood of conflict with other trade marks when the trade mark is examined on relative grounds.  The problem is acute with software given that software pervades everything.  Therefore, a gaming business trade mark may conflict with a trade mark covering software for use in cancer diagnosis.

The position is different in New Zealand.

IPONZ claims the unqualified terms “computer software”, “non-downloadable computer software”, “computer applications”, “software modules”, “interactive software”, “multimedia software”, “software as a service (SaaS)” and the like are considered too broad and too vague, as they do not precisely indicate the particular software that the applicant provides.

Where a specification includes a broad software term, IPONZ will raise a concern under section 32(2) of the Trade Marks Act 2002, and the applicant will be asked to specify the software more precisely.

IP Australia is currently considering reform to require greater specificity.  However, this initiative does not include computer software, because this accords with the NICE Classification.

Consequently, Australian trade mark owners will need to continue to consider removal applications to restrict broad goods/services claims and co-existence arrangements to navigate a sea of software trade marks.

Virtual Reality

The software issue also takes on greater significance in relation to trade mark protection for virtual goods in the metaverse.

Practice will undoubtedly evolve, but currently, the typical classification for virtual goods is as downloadable software in Class 9.  The metaverse phenomenon will likely give rise to an even greater prevalence of software goods/services in conflict, particularly in a territory where no specificity is required.

There are many serious questions on the trade mark protection of virtual goods.  However, a practical concern is that the examination of trade marks covering virtual products may not consider substantially identical or deceptively similar trade marks covering real-world equivalents if the trade marks are not in associated classes.

Good intentions

The ability to file broadly in Australia is tempered by the requirement [4] that a trade mark applicant must, at the time of filing the trade mark application:

• use or intend to use the trade mark;

• authorise or intends to authorise another person or entity to use the trade mark; or

• intend to assign the trade mark to a corporation to be incorporated.

Practically this is not an onerous requirement because the fact of filing an application is prima facie evidence of an intention to use the trade mark and because there is no requirement to provide evidence of use.

However, because the issue of genuine intention to use arises as on opposition ground [5] (see Clouds with Silver Linings) and as a removal ground [6], overly broad claims are a risky strategy.

For further information, please contact Lance Scott.

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[1] NEC Corporation [2002] ATMO 32

[2] Subreg4.8(3) TM Regs

[3]Section 32(2) Trade Marks Act 2002 (New Zealand)

[4] Section 27(1) Trade Marks Act 1995 (Cth)

[5] Section59 Trade Marks Act 1995 (Cth).

[6] Section 92 Trade Marks Act 1995 (Cth).