IP Australia yesterday (22nd November 2006) issued a clarification of practice in relation to the classification of retailing and wholesaling of utilities in trade mark application specifications.
The retailing and/or wholesaling of utilities includes the retailing and/or wholesaling of electricity, energy, gas supply, water supply, telecommunications network access and similar services.
Applications for trade mark registration in these areas have previously been included in class 35, the correct class for general retailing and wholesaling services. However, IP Australia has advised that it has been informed by the World Intellectual Property Organisation that these types of claims do not fall under the definition of retailing and wholesaling services in class 35. Class 35 is restricted to services involving the 'bringing together of a variety of goods enabling customers to conveniently view and purchase those goods, excluding the transport thereof.'
Rather, the appropriate classes are class 39 (the provision of electricity, energy, gas supply, water supply etc) and class 38 (the provision of telecommunications network access etc).
IP Australia will no longer accept applications for the wholesaling or retailing of utilities in class 35 and owners with pending applications will need to agree to transfer their claims to either class 38 or 39 as appropriate.
The changes do not affect existing trade mark registrations in class 35.
The result of the changes is that any new applications filed by utilities will need to reflect the correct classes.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.